The Chennai-based Intellectual Property Appellate Board (IPAB) has restricted Cadilla Chemicals Ltd. from registering and using the trade mark 'Stemiz' in India, while allowing an appeal filed by Ind-Swift Ltd., Chandigarh challenging a decision of the Assistant Registrar of Trade Marks, Ahmedabad.

At present, Zydus Cadilla is not manufacturing anti-allergent Stemiz, following the ban enforced by DCGI since January 1, 2003 by a notification dated 29.10.2002 on manufacturing and sale of drug Astemizole, for causing liver damages and cardiac problems. The drug has been disallowed by drug control authorities in many countries. Stemin, a topical steroid, is one among the top five brands of Ind-Swift, informed sources said.

In a recent judgment, the IPAB consisting of chairman Justice S Jagadeesan and vice chairman Dr. Raghbir Singh felt that phonetically, visually and also in writing nature, the impugned mark is identical with that of Ind-Swift's mark, Stemin. Since both the marks being used in respect of medicinal products, no confusion or deception could be allowed, even if negligible. The medicinal products being used for human beings in respect of their health, even the slightest confusion may become hazardous to one's life, and as such, the danger is much more to human life.

The IPAB felt that though Stemiz had become a banned item, it should come up with a decision, as there is every possibility for Cadilla to continue the production in view of the mark being in existence in the registry of Trade Marks, if the government withdraws the ban.

The board conceded the argument of Ind-Swift's counsel that both the products being pharmaceutical ones and the impugned trademark being the same would cause confusion and deception in the trade.

Ind-Swift's counsel pleaded that by virtue of the ban effective since 1/1/2003, Cadilla's product has been removed from the list of updated prescribers handbook. Consequently, at present Cadilla is not manufacturing any product under the disputed trademark. However, the Appellate Board may consider the appeal on merits with regard to the similarity of the mark and give a decision on merits so that Cadilla could be prevented from using the mark in respect of other products. The counsel of Cadilla pleaded ignorance of the notification banning Astemizole.

As per the case, Cadilla Chemicals Pvt. Ltd. filed an application for registration of the trade mark Stemiz in respect of pharmaceutical, veterinary and sanitary substances, infants and invalid foods, plasters, material for bandaging, materials for stopping teeth, dental wax, disinfectants; preparations for killing weeds and destroying vermin claiming user of the mark as proposed to be used in India. Ind-Swift filed their notice of opposition on 26.12.1994 stating that they are the registered proprietors in India of the trademark consisting of word Stemin in respect of pharmaceutical and medicinal preparations.

However, the Assistant Registrar of Trademark rejected the opposition, and allowed Cadilla's trademark with a clause, restricting sale of Stemiz in certain areas in North India where Ind-Swift established market for its Stemin. Ind-Swift challenged the decision at the High Court of Gujarat during 1996, and the case was transferred to IPAB for its decision.