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Judgment
S. Usha, J
1 . This appeal arises out of the order dated 15.04.2002 passed by the Assistant Registrar of Trade Marks allowing the opposition No. .AMD-52503
and refusing application No. 553896 in class 5 under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the
Act). The Appellant had also filed M.P. No. 23/09 to order substitution of Cadila Healthcare Limited as Appellant in the present appeal in place of
Cadila Laboratories.
2 . The Appellant herein filed an application for registration of the trade mark NEOPLATIN under application No. 553896 in class 5 in respect of
pharmaceuticals and medicinal preparations on 04.07.1991 as proposed to be used. The said application was advertised in the Trade Marks Journal
No. 1171 dated 16.3.1998 at page 2396.
3 . The first Respondent herein opposed the registration by filing a notice of opposition on the ground that they are the manufacturers and dealers in
pharmaceutical drugs, dietic specialities, tonics, injections, syrups, ointments etc., and are the owners and users of the trade mark NEOPEPTINE
under No. 265564 in class 5. The trade mark NEOPLATIN and NEOPEPTINE are phonetically, visually an structurally similar and is definitely likely
to cause.
The Appellant herein filed their counter-statement denying the averments made in the notice of opposition. They had also stated that they are
carrying on the business of manufacturing pharmaceutical and medicinal preparations for last many years. Their predecessor had coined the word
NEOPLATIN from the active drug CARBOPLATIN.
The second Respondent herein i.e. the Assistant Registrar refused the registration of the trade mark on the finding that ;
a) the impugned trade mark has not acquired distinctiveness or is capable of being distinguished and so the objection under Section 9 of the Act is
sustained;
b) in any mark it is not the suffix that is the controlling sound but it is the prefix which makes the proximity of the marks. Hence the objection under
Section 11 of the Act is upheld;
c) the opponents are registered proprietors of the trade mark in India and the objection under Section 11(e) of the Act is upheld;
d) on a overall comparison of the rival marks, there is an apparent conflict between them so the objection under Section 12(1) of the Act is sustained;
e) the opponent's user is bonafide long and the applicant's subsequent use is tainted with dishonesty so the objection under Section 18(1) of the Act is
sustained.
Aggrieved by the said order dated 15.04.2002, the Appellants herein preferred the instant appeal before the Hon'ble High Court of Gujarat in
Appeal No. 3 of 2002. Pursuant to Section 100 of the Trade Marks Act, 1999, the appeal was transferred to this Board and re-numbered as
TA/285/2004/TM/AMD.
The Appellants are carrying on business of manufacturing and marketing medicinal and pharmaceutical preparations since many years. On
04.07.1991, the Appellant's predecessors in title i.e. Cadila Laboratories applied for registration of the trade mark NEOPLATIN under No. 553896 in
class 5 in respect of pharmaceutical and medicinal preparations. The same was advertised in the Trade Marks Journal No. 1171 dated 16. 03.1998 at
page 2396. The first Respondent filed their notice of opposition opposing the registration of the trade mark NEOPLATIN. The second Respondent on
completion of the pleadings heard and disposed the matter. Being aggrieved by the said order, the Appellants have filed the appeal on the following
grounds:
a) The learned Registrar erred in passing the impugned order
b) the learned Registrar ought to have dismissed the opposition and allowed the application for registration;
c) the learned Registrar ought to have held that the rival marks are neither identical nor deceptively similar;
d) the second Respondent misdirected himself in passing the impugned order;
e) the Registrar ought to have exercised his discretion while passing the impugned order;
f) the learned Registrar failed to apply to the correct test of exercising judicial discretion to the facts of the case;
g) the impugned order is contrary to law and to the evidence on record and the principle of justice equity and good conscience.
The first Respondent filed their counter-statement denying the various allegations made in the grounds of appeal. The appeal suffers from
suppression veri & suggestion false and the whole appeal is based on misconception of law. The learned Registrar has rightly held that the rival marks
are deceptively similar and the possibility of confusion was certain. The second Respondent has passed the impugned order exercising his
discretionary power and as per the provisions of the Act. The adoption of the trade mark NEOPLATIN is illegal and contrary to the provisions of the
Act and the adoption is with malafide intention to obtain unlawful and illegal profit by use of the trade mark.
9 . The first Respondent's use of the trade mark NEOPEPTINE is much prior to the adoption of the trade mark NEOPLATIN by the Appellant. The
first Respondent is the prior adopter and user of the trade mark. The expenses on the sales promotion activity of the Respondent's goods bearing the
trade mark NEOPEPTINE runs to lakhs of rupees which establish that the respondent's goods have acquired very good reputation in the market.
It is respectfully submitted that the Appellant has failed to make out a prima facie case and therefore the appeal be dismissed with exemplary
costs.
We have heard Shri B.H. Chatrapati learned Counsel for the Appellant and Shri D.B. Metha learned Counsel for the first Respondent in the
Circuit Bench Sitting at Ahmedabad on 23.11.2010.
1 2 . Learned Counsel for the Appellant submitted that the rival marks were NEOPLATIN and NEOPEPTINE and there was no similarity between
the two and a such no confusion. The Appellant's goods were Schedule H drug for treating cancer. It was an injection costing Rs. 870/-whereas the
Respondent's goods were vitamin tablets costing around Rs. 60-70/-. The word NEO is generic. There are various products in the market with the
word NEO as prefix. The Respondent failed to prove confusion in the trade. The counsel relied on few judgments in support of his case.
In reply to the Appellant's arguments, learned Counsel for the first Respondent relied on the findings of the Registrar and submitted that the
impugned order was rightly passed and the appeal deserves to be allowed.
We have heard and considered arguments of both the counsel and have gone through the pleadings and documents.
The trade mark applied for registration is to be seen if it qualifies for registration as per the provisions of Section 9 of the Act. A mark qualifies for
registration under Section 9 of the Act only if the mark is distinctive of the goods or is capable of being distinguished. The mark is adapted to
distinguish or is capable of being distinguished only by use of the mark. The impugned trade mark NEOPLATIN was applied for registration on
04.07.1991 as a proposed to be used mark. It is, therefore, seen that the trade mark was not put to use on the date of application. In the affidavit of
evidence filed before the Registrar, the Appellants have admitted that they started using the trade mark since the year 1991. The Appellants that apart
have not produced any document in support to say that they had been using the trade mark since 1991 or later. The Appellants have placed before the
Registrar the India Drug Review of the year 1997, 1999 and 2000 which is very much subsequent to the said date of user-1991. Therefore, the
impugned trade mark does not qualify for registration under Section 9 of the Act as the impugned trade mark has not acquired distinctiveness by use.
The objection under Section 11 of the Act was that there was a possibility of confusion and deception by the use of the impugned mark as there
was already a similar trade mark registered. In the instant case, it is seen that the opponent / Respondent's trade mark NEOPEPTINE is already
registered as of the year 1970. So, if the mark is registered then there is every possibility of confusion being caused. The onus is always cast on the
applicant / Appellant to show that there will be no confusion or deception if the mark is allowed to be registered. The Appellant has not satisfied the
same.
The findings made in the case of Ranbaxy Laboratories v. Dua Pharmaceuticals Pvt. Ltd. has been reproduced in the impugned order at page 7
which in our considered opinion is squarely applicable to the case on hand and we, therefore, uphold the view of the Registrar as regards the objection
under Section 11 of the Act.
In the case of pharmaceutical products the test of comparison is strictly applied. The Registrar is imposed greater responsibility for the assessment
of the similarity of the marks while granting registration. In the case of medicinal products, the confusion may result in a threat to life which cannot be
compensated in terms of money. Medicines with different effects and designed for even subtly different uses, confusion among the products caused
by similar marks could have disastrous effects.
Next, regarding the use of the trade marks, the Appellant's use is proposed to be used as on date of application in the year 1991, if at all used could
be only from the year 1991 whereas the first Respondent has been using the same for the last 27 years. The Respondent's right is more valid than the
Appellant's right as per the settled principle of trade marks law. In the case of passing-off the prior user gets a valid title than the subsequent user.
Therefore, the registration of the impugned trade mark is prohibited of registration under section 11(e) of the Act which would be disentitled to
protection in a court.
The other issue is regarding prohibition of registration of identical or deceptively similar trade marks. The settled principle of law is that the marks
are to be compared as a whole. The rival marks herein are NEOPLATIN and NEOPEPTINE in which excep for the words PLA and PEP in
between the suffix and the prefix are the same. The marks are, therefore, deceptively and phonetically similar in respect of the same goods. The
provisions of Section 12(1) of the Act is applicable here and the objection therein is therefore, sustained.
21 . As regards the claim of the proprietorship under Section 18(1) of the Act is concerned, the Appellant has adopted the mark in the year 1991 that
is after the Respondent's adoption and use. The adoption itself cannot be treated as honest. The Respondent has obtained registration as early as 1970
and is the proprietor of the trade mark as per Section 18(1) of the Act.
22 . We, therefore, find no infirmity in the impugned order dated 15.4.2002 and accordingly dismiss the appeal with no order as to costs. M.P. 23/09
for amendment of cause title is allowed.