Law: Trade Marks Ordinance, 2001

Section: 14,16,2(XIVII)

Summary: The appellant sought registration of the trade mark “PROGREL” in Class-5 for pharmaceutical products. The Registrar of Trade Marks had refused registration after an opposition by Sanofi Aventis, arguing that the mark was deceptively similar to the INN “CLOPIDOGREL” and contained the generic stem “GREL,” making it non-distinctive and barred under Sections 14 and 16 of the Trade Marks Ordinance, 2001. The appellant argued that the mark was inherently distinctive, widely used, and the shared suffix “GREL” was common in the pharmaceutical industry, not indicating source. The Court held that the Registrar relied on theoretical similarity without evidence of actual consumer confusion, and that the mark as a whole was distinctive. The appeal was allowed, and the trade mark “PROGREL” was ordered to be registered. Legal Basis / Sections Invoked: Section 14, Trade Marks Ordinance, 2001 – Prohibition of marks lacking distinctiveness or descriptive of goods. Section 16, Trade Marks Ordinance, 2001 – Prohibition of marks that are chemical names or International Non-Proprietary Names (INNs). Section 2(xlvii), Trade Marks Ordinance, 2001 – Definition of a trade mark. 2 Two-Word Descriptions for Case: Trademark Registration Pharmaceutical Dispute JUDGMENT Through this Misc. Appeal filed under Section 114 of the Trade Marks Ordinance, 2001, the appellant has called in question the decision dated 07.12.2012, passed by the Registrar of Trade Marks, Karachi, whereby Opposition No.1147 of 2007, filed by respondent No.1, namely; Sanofi Aventis, was allowed and the registration of the appellant’s trade mark “PROGREL” under Application No.204712 in Class-5, dated 10.01.2005 in respect of pharmaceutical medicines was refused. Briefly stated, the appellant claims to be engaged in the manufacture and sale of pharmaceutical and medicinal preparations and asserts that he has been marketing his products under various trade marks including the mark “PROGREL.” In order to secure statutory protection, the appellant applied for registration of the said mark before the Registrar…