Dr. Reddy's Laboratories Ltd. vs Win-Medicare Ltd. And Deputy Registrar Of Trade Marks

Z.S. Negi, J

The Appellant has preferred the above appeal against the order dated 27.8.2007 passed by the Deputy Registrar of Trade Marks, Chennai,

whereby he allowed the opposition No. MAS-121100 and refused the registration of trade mark under application No. 931068B in class 05.

The Appellant filed the above referred appeal on 24.1.2008 along with an application for condoning the delay of 54 days in filing of the appeal. The

application for condoning delay being numbered as C.O.D. No. 03/2008 in SR No. 359/2007/TM-IPAB came up for hearing on 27.6.2008 and, after

hearing counsel for both the parties, the application for condoning delay was dismissed by Order No. 118 of 2008 dated 4.8.2008 of this Appellate

Board. Aggrieved by the said order of this Appellate Board, the Appellant filed Writ Petition No. 28101 of 2008 in the High Court of Judicature at

Madras for a writ of certiorarified mandamus calling for the records of the third Respondent's (Appellate Board's) order bearing No. 118 of 2008

dated 4th August, 2008 in C.O.D. No. 3/2008 in S.R. No. 359/2007/TM/IPAB and seeking to quash the same and consequently to direct the third

Respondent to consider the Petitioner's appeal vide S.R. No. 359/2007/TM/IPAB on merits. The Hon'ble High Court, after hearing the counsel for the

Appellant/Petitioner and counsel for the Respondent Nos. 1 and 4, passed the following order dated 05.11. 2009:

Learned Counsel for the Petitioner and the learned Counsel for the 4th Respondent, which are the contesting parties, submit that the understanding

is arrived at between the parties and the Respondent No. 4 is agreeable for condo nation of delay in the appeal filed by the Petitioner, pending before

the Intellectual Property Appellate Board, Chennai. In view of the understanding arrived at between the contesting parties, the order passed by the

Intellectual Property Appellate Board, Chennai dated 4th August, 2008 rejecting the application for condo nation of delay is set aside. The said Board

will proceed and decide the said appeal filed by the Petitioner on its own merits. Accordingly, the writ petition is disposed of. No costs.

Having regard to the above order of the High Court, the appeal is admitted and registered and accordingly notice dated 12. 01.2010 was given to

the Respondents that if they wish to contest the appeal, they may file their counter statement in accordance with the provisions of the Intellectual

Property Appellate Board (Procedure) Rules, 2003. In response to the said notice, Mr. Dev Kumar Lalwani, advocate on behalf of the Respondent

No. 1 vide letter dated 28. 01. 2010, copies thereof endorsed to the Appellant and its counsel, submitted as under:

It is humbly submitted that the parties (the Applicant/Appellant and the Respondent) have amicably settled the matter and therefore, the Respondent,

does not wish to pursue the matter under reference.

-in view of the above submission, the Respondent is not inclined to file the counter statement (FORM-1) in this matter. It is therefore, prayed that the

application of the Applicants may be allowed and necessary orders may be passed accordingly.

Thereupon, Ms. Aga Arvind, Advocate, while referring to the above letter dated 28. 01. 2010 of Mr. Dev Kumar Lalwani, advocate, vide letter No.

AA/vj dated 3. 6. 2010 wrote to the Appellate Board to state that ""The Respondents have vide their above-identified letter, intimated their intention not

to file their counter statement. We, therefore, request the Hon'ble Board to set down the matter for a hearing under intimation to us at the earliest.

The appeal was listed for hearing on 16.6.2010 and same came up before us for hearing today when Ms. Aga Arvind, advocate appeared for the

Appellant and Mr. K. Premchandar, advocate, authorized by Mr. Dev K. Lalwani, appeared for the Respondent No. 1. Learned Counsel for the

Appellant submitted that in view of the facts and circumstances, the impugned order dated 27.8.2007 be set aside and the matter may be remanded

back to the Registrar of Trade Marks for deciding the same afresh. Learned Counsel for the Respondent No. 1 submitted that he has no objection if

the matter is remanded back to the Registrar of Trade Marks for deciding the same afresh. He submitted that in fact the Appellant's application No.

931068B dated 12.6.2000 (on proposed to be used basis) for registration of trade mark ATOCOR in class 05 was opposed by the Respondent No. 1

on the ground, amongst others, that the Respondent No. 1 is engaged in the manufacturing and marketing of various pharmaceutical preparations and

are using the trade mark ATECOR which is registered under No. 503610 in class 05 as of 9.1. 1989 and the opposition was allowed by the Deputy

Registrar of Trade Marks. In the meanwhile, the Respondent No. 1 assigned its trade mark ATECOR to the Appellant by way of assignment deed

dated 21.10.2009 for consideration and as such now the Appellant is the subsequent proprietor of the trade mark ATECOR. He submitted that this

understanding arrived at between the Appellant and the Respondent No. 1 was brought to the notice of the High Court of Madras and the Court has

mentioned that understanding in its order dated 05.11.2009.

After having heard counsel for both the parties and after going through the records, we are of the view that neither the impugned order can be set

aside nor the matter can be remanded back for deciding afresh. The reason being that the impugned order can be set aside if, after considering the

matter on merits, found to be unsustainable. In this case we cannot decide the appeal on merits as the pleadings are not complete and evidences have

not been adduced. The Respondent has already intimated that it does not wish to pursue the matter before this Appellate Board. The next reason

being that at the time of opposition proceedings before the Registrar of Trade Marks, the Respondent No. 1 was the registered proprietor of the trade

mark ATECOR on the basis of which it contested the proceedings and succeeded. The position changed only after passing of the impugned order that

is to say the Respondent No. 1 is no longer proprietor of the trade mark ATECOR, the subject matter of the appeal. This Appellate Board cannot hold

that the Respondent No. 1 is no longer the proprietor of the trade mark ATECOR hence the impugned order is illegal. We do not see any reason or

justification as to why the impugned order should be set aside and matter remanded back to the Registrar of Trade Marks. Keeping the facts and

circumstances in view, the appeal, at best, be dismissed as in fructuous.

Having regard to the above, we dismiss the appeal as in fructuous. However, there shall be no order as to costs.