 "DuPont gets favourable order from IPAB in trade mark dispute on Nomex")
The issue was related to the Assistant Registrar of Trade Marks, Mumbai, refusing the opposition of E I Du Pont De Nemours & Company, and allowing the trade mark application of Trade Mark Nomex under class 5 (which deals with pharmaceuticals) of the Trade and Merchandise Marks Act, 1958. DuPont claims that Nomex was registered by DuPont in India from 1984, under various classifications. DuPont has Nomex as a brand for a flame resistant fiber that is useful across a wide variety of industries - from firefighter turnout gear to transformer insulation.
An order issued by IPAB Chairman Justice K N Basha and Technical Member (Trade Marks) Sanjeev Kumar Chaswal, said that the Assistant Registrar's decision on March 11, 2009 was a short cryptic one without assigning cogent reasons and by simply quoting the provisons under the Acts. They observed that the order of Assistant Registrar does not disclose on what grounds or on what material record he has allowed the registration to go ahead by rejectiong the contentions of DuPont.
Chaswal, in the order said, "The Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasons as to how he had arrived into conclusion that the mark though identical and similar, but still there is no confusion or deception."
He further added, "In view of the aforesaid reasons, we are of the considered view that the impugned order was passed in gross violation of principles of natural justice. Accordingly, the impugned order of the Assistant Registrar of Trade Mark, Mumbai dated March 11, 2009, is hearby set aside. The Assistant Registrar shall consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law within a period of three months from the date of receipt of this order."
DuPont argued that its association with India is since 1902, when they used to supply raw materials for black powder for explosives. It has obtained registration of Trade Mark Nomex in many countries including under various classifications in India.
The company came to know in April 1999 that Galpha Laboratories has filed application for the mark named Nomex under the Trade and Merchandise Mark Act, 1958, in respect of pharmaceutical and medical proprietary substances in class 5, claiming user as proposed to be used. DuPont filed an opposition with the Assistant Registrar, who after completed hearing both the parties, issued an order on March, 2009 rejecting the opposition of DuPont stating various reasons.
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The Assistant Registrar has said that Galpha Laboratories has conducted a search on the trade mark registry for the said mark under Class 5 and could not find any conflicting trade mark and held that there is no similarity with the mark that of the opponent and no possibility of confusion and deception under the relevant rules in the Trade Marks Act, 1999. It ordered that the goods of Galpha Lab are entirely different from that of DuPont's.
The company has raised contentions that the Assistant Registrar failed to appreciate its use of trade mark Nomex in the international market since 1963 and in India since 1984 and that the trade mark adapted by the pharmaceutical firm is identical. It added that the Assistant Registrar also erred in holding that usage of the mark by the pharmaceutical company would not cause confusion and deception amongst the members of the public and trade as the buyhers are different from that of DuPont.
Galpha Laboratories argued that it has conducted prior search in selection and adoption of the mark, and there was no prior use of the mark in the pharma industry. It also said that the registration of application Nomex in Class 5 will not came prejudice to DuPont's trade mark as its trade mark is distinctive and can be distinguished from the product of DuPont.