Glaxo Group Limited vs Lyka Labs Limited

Prabha Sridevan, J

1 . This rectification petition has been filed for cancelling the mark CELIB in class 5 bearing registration number 886287 in the name of the respondent. The respondent has been served but has not chosen to appear, so the matter was heard ex parte. The learned counsel for the applicant made his oral submission and also filed his written submissions.

The applicant claims that on the basis of prior use of the mark CELIN since 1942 it is entitled to seek cancellation. The mark is used in respect of Vitamin C preparations. CELIN is a coined word, and is inherently distinctive. It has been registered in several countries. The details of the earliest registration of the mark CELIN in India is dated 14-9-1942. The products have gained world-wide reputation. The applicant had licensed the mark to its Indian subsidiary, J. Fosters in 1949. This agreement was duly notified in the Trademarks Journal. The licensee has changed its name to Glaxo India Pvt Ltd. Paragraph 3 of the affidavit of evidence shows the ownership of the mark CELIN. The applicant has produced evidence of huge sales. The applicant made enquiries and found that the respondent has no bonafide use of the impugned mark. CELIN has acquired a high level of distinctiveness, and the presence of the impugned mark will cause confusion and dilute the applicant's mark, because it is virtually identical to the same. The mark has to be cancelled.

The learned counsel for the applicant submitted that the mark is almost identical, and it is not distinctive. He submitted that both the parties are in the same line of business, and therefore there is likelihood of confusion. He submitted that there was no use on the date of filing the application, and that the respondent is not a bonafide proprietor. He submitted that the mark CELIB will result in loss and dilution of the mark CELIN.

4 . He produced as evidence the Annexures 'A' to 'F', which include the copy of the annual reports of Glaxo SmithKline which is part of the applicant, the copy of the renewal certificate, the license agreement and the official search report.

He relied on -

(i) AIR 1960 SC 142 -Corn products Refining Co Vs. Shangrila Food Products Ltd.

(ii) AIR 1963 SC 449 - Amritdhara Pharmacy Vs. Satyadeo Gupta

(iii) 2002 (24) PTC 580 (Guj) -Torrent Pharmaceuticals Ltd. Vs. The Wellcome Foundation Ltd., and

(iv) AIR 1989 Del 44 - Ranbaxy Laboratories Vs. Dua Pharmaceuticals Pvt. Ltd. for his objections regarding confusion; and on

(v) 2001 (21) PTC 562 (Reg) (Mad) -Tube Investments of India Ltd Vs Tata Engineering and Locomotive Company Ltd., and

(vi) 1996 PTC 160 (Del) - Aktibolaget SKF Vs. Rajesh Engineering Corp. for his objections regarding dishonest adoption, and

(vii) 2001 PTC 541 - Cadila health Care Ltd Vs. Cadila Pharmaceuticals Ltd. for the proposition that stringent test should be applied in pharmaceutical trade.

The applicant's mark is the prior use, it has been in use since 1942. The evidence also shows its use of the mark. The applicant claims that the respondent has not used the mark and that the web site of the respondent does not show the mark. This plea of non-user stands unrebutted.

In the Torrent Pharma case (cited supra) the marks were TROVIREX and ZOVIREX It was an appeal against the Registrar's order allowing the opposition. The Hon'ble Gujarat High Court held that the Court will not permit theft of the property of a citizen and that the consumers must be protected from the threat of confusion.

On an appreciation of the materials before us, we find there is no plea of user by the respondent. So the allegations made by the applicant stand unchallenged. The likelihood of confusion between CELIN and CELIB cannot be ruled out. CELIN is coined/invented word and has been used by the applicant for over 8 decades. In addition the learned counsel for the applicant also downloaded from the IPO website, the present position of the mark CELIB, as Annexure 'J'. This shows that the mark was renewed up to 11/11/2009 and not thereafter. Probably this is the reason why the respondent is absent, since they are no longer interested in the mark and the mark has also expired. The impugned mark CELIB in class 5 bearing registration number 886287 cannot remain in the register, and is accordingly removed. ORA/184/2009/TM/MUM is therefore allowed.