Hygienic Research Institute Private Limited vs Solvay Pharmaceutical Marketing And Licensing And Ors.

K.N. Basha, J

Mr. Shiwprasad Wanve, the learned counsel for the appellant and Mr. M.S. Bharath, the learned counsel for the first and third respondents are present today.

The challenge in this appeal is to the order passed by the Deputy Registrar of Trade Marks, Mumbai dated 20/04/2009 dismissing the opposition filed by the appellant herein in opposition No. BOM-56623 and accepting the application filed by the first respondent herein under No. 609339 in class 5 subject to the amendment of the specification of goods to read as pharmaceutical preparations in the form of ointment for the treatment of psoriasis by filing Form TM-16.

The trade mark application No. 609339 for SILKIS as proposed to be used in class 5 was filed on 13/10/1993 in the name of 'Dutraco SA'. The same was published in the trade mark journal No. 1223(S) dated 21/05/2000 at page 42. Pursuant to the same, the appellant preferred Form TM-5 notice of motion on 17/08/2000. Form TM-6 counter statement was filed by Solvay Pharmaceutical Marketing and Licensing AG who is the first respondent herein, who has assigned to the third respondent herein namely, Galderma SA, Switzerland on 07/10/1996. The evidence was filed by the appellant on 29/02/2002. The evidence in support of the appellant by the first respondent hereunder was filed on 27/11/2002 and reply evidence was filed by the appellant on 01/12/2002.

The Deputy Registrar on consideration of the evidence produced by both sides and the counter statement and the reply to the counter and after hearing the respective counsel, rejected the opposition filed by the appellant herein by the order dated 20/04/2009 and the said order is under challenge in this appeal.

Mr. Shiwprasad Wanre, the learned counsel for the appellant would vehemently contend that the impugned order is liable to be set aside as the same is not only contrary to the law but also to the facts and passed in gross violation of principles of natural justice. It is contented that the appellant has raised principal objection to the fact that Form TM-6 counter statement was filed by the first respondent herein in spite of assigning rights in favour of the third respondent and even the evidence in support of the application dated 27/11/2002 are also filed in the name of the first respondent. The sales figures for 2001-2002 have been given by the first respondent thereby played fraud on the Registry of Trade Mark. It is contented that after assigning the rights by the assignor, the assignee has stepped into the shoes of the assignor and thereafter the assignor has no role to play. In support of such contention, the learned counsel placed reliance on the order of this Board dated 09/06/2015 as per order No. 122 of 2015. It is contented that this aspect of the assignment had brought to the notice of the Deputy Registrar only after the pronouncement of the order and that too when the first respondent sought for recording the assignment before the Deputy Registrar and thereby the appellant has been deprived of his opportunity to raise objection.

It is further contended that the impugned order has been passed on the basis of counter statement and evidence filed by the assignor who was at the time practically and legally could not have claimed the proprietorship of the impugned trade mark. The Deputy Registrar has failed to consider the deceptive similarity in the rival marks 'SILKISS' and 'SILKIS'. The affidavit filed by the first respondent is affirmed by Mr. C. de Graaf, Chief Operating Officer of first respondent company and verified by Mr. Dirk Dames and thereafter attested by a Notary Public and as such, the Deputy Registrar acted on defective affidavit. The Deputy Registrar failed to consider that the goods of the first respondent and applicants and their trade channel is also the same which are available in the same medical shops which would result in confusion among the consumers. It is submitted that the Deputy Registrar is wrongly rejected the objections under section 11 of the Trade Marks Act, 1999 (hereinafter referred as the 'Act') and invoked section 12 in a proposed to be used trade mark for granting registration by wrongly interpreting section 11 and section 12 of the Act. The Deputy Registrar ought not to have invoked section 12 at all and further the said circumstances pointed out are unsustainable as the same were made arbitrarily.

Per contra Mr. M.S. Bharath, the learned counsel for the first and third respondent would strongly contend that there is no infirmity or illegality in the impugned order. It is pointed out that there is relationship of Licensor and Licensee between the first respondent and the third respondent and as such, there is nothing wrong in filing counter statement by the first respondent till the recording of the assignment by the Registrar. In support of such contention, the learned counsel would place reliance on the decisions of this Bench in Chateau de Cognac S.A. Vs. Shaw Wallace and Co. Ltd. & Others reported in 2005 (30) PTC 321 (IPAB). It is further contented that the first respondent has not placed any reliance of section 12 of the Act and as far as section 11 of the Act is concerned, the goods are not similar though the trade mark is identical and the trade channels are different. It is pointed out that they have opposed the appellants application under class 5. The learned counsel for the first respondent would submit that the Deputy Registrar has assigned valid reasons and further directed them to amend the specification of goods by filing TM-16 limiting their goods to pharmaceutical goods in the form of ointment for the treatment of psoriasis and the same was complied by the first respondent herein.

We have given our careful, thoughtful and anxious considerations to the rival contentions put forward by either side and also thoroughly scanned through the entire materials available on record and perused the impugned order.

At the outset we are constrained to state that in view of filing defective affidavit by the first respondent herein at the time of filing the evidence and counter to the opposition by the assignor who has no role to play after assignment as the assignee/third respondent has already stepped into the shoes, the entire proceedings are vitiated. This is a very serious flaw for the proceedings and for the reasons best known to the first respondent as he has all along kept quiet and not whispered a word about the assignment as the Assignment Deed was executed on 07/10/1996 and the counter and evidence in support of application was filed by the first respondent on 05/03/2001 and 27/11/2002 respectively and at that time in spite of the fact of assigning their rights by executing the Assignment Deed in favour of the third respondent as early on 07/10/1996. It is pertinent to note that the first respondent has disclosed the assignment only while filing TM-16 for recording the assignment and thereby preventing or denying the opportunity for the appellant to raise their objection. In our order dated 09/06/2015, as per Order No. 122 of 2015, in the very same matter between the same parties while impleading the third respondent herein, we have categorically held that:-

"7. The fact remains that the petitioner is the assignee as per the assignment deed dated 07/10/1996 and as such for all practical purpose and legally the assignee has stepped into the shoes of the assignor and whatever the benefits or rights accrued by the assignor in respect of the registration of the trade mark shall go to the assignee."

The learned counsel for the first respondent placed reliance on the decision of this Bench in 2005 (30) PTC 321 IPAB in Chateau De Cognac S.A. vs. Shaw Wallace And Co. & Ors. In this case, there was a merger between the two companies and as such that cannot be equated with the assignment in the decision cited supra in the decision of the merger both the parties are sailing in the same boat. As far as the assignment is concerned, once the assignment is executed by the assignor, he has no more role to play as the assignee has already stepped into the shoes of the assignor. Therefore, we are unable to countenance the contentions of the first respondent.

It is pertinent to note that the Deputy Registrar has failed to consider the documents relied by the appellant herein which are related to the earlier years than that of the first respondent. It is curious to note that the Deputy Registrar has invoked section 12 of the Act and in respect of the same, Mr. M.S. Bharath, the learned counsel for the first and third respondent would fairly submit that they have not placed any reliance on section 12 and such su moto invocation of section 12 also vitiates the impugned order. The reason assigned by Mr. M.S. Bharath for the above said contention is that section 12 can be invoked only if section 11 is violated.

It is to be reiterated that in respect of defective affidavit filed by the second respondent, the Deputy Registrar has not rendered any finding at all though he has incorporated the arguments of the appellant.

We are also constrained to reiterate that the first respondent for the reasons best known to them suppressed the material factor of assignment and they thought it fit to disclose the same only after succeeding the matter of opposition.

We are also constrained to state that the su moto action of placing reliance under section 12 of the Act by the Deputy Registrar behind the back of the appellant and inventing a special circumstance would amount to flagrant violation of the principles of natural justice. In view of the aforesaid reasons, we arrive at the inevitable conclusion to set aside the impugned order dated 20/04/2009 passed by the Deputy Registrar of Trade Marks, Mumbai. Consequently, the Deputy Registrar shall consider the opposition No. BOM-56623 afresh by affording reasonable opportunity to both sides. It is made clear that the said exercise shall be completed within a period of six months from the date of receipt of the order copy of this Bench.