The Intellectual Property Appellate Board has ordered removal of Clinoxide and Clinoxide-A marks in Class 5...
The Intellectual Property Appellate Board (IPAB) has ordered removal of Clinoxide and Clinoxide-A marks in Class 5 (pharma products), owned by Ajanta Pharma, from the country’s trademarks registry as part of settling a dispute between the company and the US-based skin care major Stiefel Laboratories Inc, a GlaxoSmithKline group company.
Stiefel had contested that the said marks of Ajanta Pharma were deceptively similar to its Clindoxyl mark and had sought their removal from the registry. While Stiefel moved the IPAB with a rectification of appeal, it had also filed a suit for permanent injunction at the Delhi high court for restraining Ajanta Pharma from infringing the trademark of its Clindoxyl.
The IPAB bench of Justice KN Basha, chairman, and Sanjeev Kumar Chaswal, technical member–trademarks, on Wednesday issued the order based on a miscellaneous petition filed by Ajanta Pharma with an appeal to allow the rectification application of Stiefel Laboratories, in the wake of the settlement between the two parties.
Taking note of the settlement, the IPAB bench observed: “Accordingly, the Registrar of Trade Marks, the Trade Mark Registry of Mumbai is directed to remove the said impugned trademarks from the Registry of Trade Marks as soon as it receives our bench’s order.”
The matter was amicably settled on the basis of terms of compromise before the Delhi High Court and an order was passed by the court on September 12, 2014, observed the IPAB bench.
The Delhi High Court had earlier restrained Ajanta Pharma from marketing, selling and advertising pharmaceutical preparations under the trademark Clinoxide or Clinoxide-A, or any other mark deceptively similar to Stiefel Lab’s trademark Clindoxyl, through an interim injunction prior to both the parties entering the trademark dispute settlement.
Stiefel Lab claims to have adopted the mark Clindoxyl in 1994 in the US, in relation to a topical gel for the treatment of acne, and it was registered in India in March 2006. The company claims it has been using the mark in India since 2010. According to them, Ajanta Pharma had recently adopted a deceptively similar mark, Clinoxide, which was confusingly and deceptively similar to their registered trademark Clindoxyl.
The trademark adopted by Ajanta Pharma was also for an identical product — a skin ointment for treatment for acne.