Macleods Pharmaceuticals Limited vs Recon Limited And Ors.

S. Usha, Technical Member

Application for removal of the trade mark ""ALFACAL"" registered under No. 829609 in class 05 under Section 47/57/125 of the Trade Marks Act,

1999 (hereinafter referred to as the Act).

The applicant for rectification is a company carrying on the business of manufacturing and marketing of pharmaceutical and medicinal preparations

for more than one and a half decade. The applicants are providing health services to the ailing community across the world. They are the fastest

growing pharmaceutical company in India and ranked 22nd as per ORG-Marg and the second largest company in India manufacturing anti

Tuberculosis drugs with a market share of approximately 16% as ranked by AC Nielsen known as ORG-Marg. They have played a vital role in fight

against the dreaded diseases like Tuberculosis (TB) and is one of the few companies manufacturing and marketing all anti TB drugs including the

drugs of Rifampicin, Isoniazid, ethambutal and Pyrizinamide have been developed, manufactured and marketed by the applicants.

The applicants have honestly conceived and adopted the trade mark ""ALFACAL"" in November, 1997 and is being used by them continuously

without any interruption. The applicants in order to protect their statutory rights had applied for registration under application No. 768226 in Class 5 for

the trade mark ""ALFACAL"" on 15/10/1997. The said application was opposed by the 2nd respondent claiming to be the subsequent proprietor of the

trade mark ""ALFACAL"" by scheme of amalgamation between the 1st and 2nd respondents. The said opposition No. BOM 209648 is pending. The

2nd respondent in the Notice of Opposition has stated that the 1st respondent have obtained registration of the Trade Mark ""ALFACAL"" under No.

829609 in class 5. The applicants are thus aggrieved persons. ALFACAL is a coined and invented word. The applicants have honestly adopted the

trade mark ALFACAL and the same has acquired immense goodwill and reputation and valuable common law rights.

The use of the impugned trade mark ALFACAL by the applicants, connotes and denotes to the applicants only. As a prior user and adopter of the

trade mark ALFACAL, the applicants are the rightful proprietors of the trade mark as per the provision of Section 18 of the Act. The respondents

have applied for registration of the trade mark subsequent to that of the applicants in the year 1998 and also have not used the mark till date.

The applicants, therefore, prayed that the trade mark ALFACAL registered under No. 829609 in Class 5 be removed/rectified on the ground

hereunder

(a) the respondents are not the actual owners/proprietors of the trade mark ALFACAL.

(b) The trade mark has not been actually used in relation to the goods for which they are registered nor the respondent had any bonafide intention to

use and is thus a bar under Section 47(1)(a) of the Act.

(c) The appellants being prior adopter and user of the trade mark ALFACAL, the respondents ought to have been aware of the applicants' goodwill

and reputation. The marks being identical, the registration of the impugned trade mark offends the provision of Section 9(1)(a) of the Act.

(d) The rival trade mark being identical is likely to cause confusion and deception among the public and consequently the registration offends the

provision of Section 9(2)(a) of the Act.

(e) The rival trade marks being identical and the goods in respect of which mark is registered is also the same, the registration is in contravention to

Section 11(1)(a)of the Act.

(f) The use of the Impugned trade mark by the respondent would be detrimental to the applicants earlier trade mark as it will be a bar to its

registration under Section 11(2) of the Act.

(g) Under the provision of Section 11(3) of the Act, it will be a bar to registration, as the use of the impugned mark by the respondent would lead to

passing off.

(h) The impugned registration has been obtained not in good faith and the adoption has been dishonest and no protection under the provision of Section

11(11) and 12 of the Act.

(i) By playing fraud, registration has been obtained in contravention of Section 11 of the Act.

(j) The respondents are not using the impugned trade mark and hence cannot be proprietor of the trade mark under Section 18 of the Act.

(k) As the applicants' mark is earlier in point of time, the respondent's mark lacks the essential quality of distinctiveness for registration and protection

under Section 32 is a bar.

(I) The said registration is wrongly remaining on the register.

The notice of the above application for registration was sent to the 3 respondents, the 1st and 2nd respondents are the contesting parties and the 3rd

respondent is a pro-forma party. Notice to all the parties were served. The 2nd respondent on receipt of the notice filed Form 3 application seeking

extension of time to file counter statement and the same was granted by the Board upto February 2008. Subsequently the 2nd Respondent neither filed

their counter statement nor appeared on the date of hearing. The matter was, therefore, heard ex-parte on 03/07/08 at Chennai. Shri Vinod Bhagat,

Learned Counsel appeared on behalf of the applicant and none appeared for the respondents.

The learned Counsel for the applicant submitted that the impugned trade mark ""ALFACAL"" was applied for registration on 27/11/1998 as a

proposed to be used mark and the concerned Trade Mark Journal advertisement was brought to our notice. He submitted that the said mark was

advertised in the year 2003 until that date or till the date of the application the respondents have not used the trade mark ""ALFACAL"". The mark is,

therefore, to be expunged from the Register of Trade Marks under Section 47(1)(a) of the Act.

The Counsel further submitted that the marks are identical. The applicants have been using the trade mark since November 1997 continuously and

exclusively without any interruption. He drew out attention to the applicants Trade Mark Journal advertisement at page 9 of the typed set and

submitted that the application was made in October 1997 as a proposed to be used mark and submitted that the applicants had stated using the same

immediately and in support of the same brought to our notice a sales invoice dated 05/03/1998 which was earlier to the use by the respondents.

The Counsel further submitted that the rival marks being identical and the goods being same, possibility of confusion and deception was certain. The

Counsel also submitted that the registration of the impugned trade mark was in contravention of the provisions of Sections 9, 11, 18 & 47(1)(a) of the

Act. The Counsel submitted that the impugned trade mark had not acquired distinctiveness and the registration was not valid as per Section 32 of the

Act.

The applicants are prior user of the trade mark ""ALFACAL"". The respondent's registration for the trade mark has been obtained by suppressing

the material facts and playing fraud by which the applicants are aggrieved person within the provisions of the Act. The applicants came to know about

the present registration from the Notice of opposition filed by the respondents in one another application for registration under No. 768226 filed by the

applicant. The Counsel drew our attention to the averment made in the Notice of opposition marked as exhibit ""C"" at page 11 para 2.

11 The Counsel further submitted that the respondent's adoption was not honest as he had copied from the applicants, who were in the market first.

The respondents have not conducted a search in the trade mark registry before making an application; the respondent's application has been made

after a year i.e. on 27/11/1998 whereas the applicants application was made on 15/10/1997 - the two trade marks Journal advertisement marked as

Exhibit B and E respectively were brought to our notice.

The applicants had obtained Drug License from the competent authorities as early as 07/11/1997 marked as exhibit ""F"" along with the application

for rectification. The first invoice filed was dated 05/03/1998 marked as F-3. The counsel submitted that on perusal of the exhibits it was clear that the

applicants are prior in point of time of use as the 1st respondent's application was dated 27/11/1998 as a proposed to be used mark.

The applicants had used the trade mark widely and had done tremendous sales and the sales turnover runs to crores of rupees. The Counsel finally

submitted that the registration was obtained in contravention of the provision of the Act.

The Counsel for the applicant relied on various judgments in support of the contentions to say that he is an aggrieved person.

We have heard the submissions of the Counsel for the applicants and have gone through the pleadings.

The main issue that arises for consideration in an application for rectification is whether the applicant has a locus standi to file the same. Locus

standi is to be determined on principles along with those in public interest litigation that in private interest as rectification or removal of the mark from

the Register is to purify the register which will be a public purpose. Here it is to be noted that any person may, under Section 21, file a notice of

opposition to the registration of a trade mark, but an application for rectification can only be filed by a person aggrieved.

The expression aggrieved person has been literally construed by various courts. The Supreme Court in the case of Hardie Trading Ltd. v. Adisons

Paint and Chemicals Ltd. has considered the expression aggrieved person. The apex court noticed that the expression aggrieved person is found in

Sections 46 and 56 of the Act. Section 46 of the act applied to a case where the registration though valid is liable to be expunged for non user. The

person applying for rectification must prove that the existence of the mark affects his business in some way or the other. Section 56 of the Act is to

ensure the purity of the Register of Trade Marks. The apex court in the judgment stated supra has held as to the situation where the Section 56

applies ""(a) the contravention on failure to observe a condition for registration (b) the absence of an entry (c) an entry made without sufficient cause

(d) a wrong entry and (e) any error or defect in the entry.

Where a trader by means of having a trade mark wrongly registered in his name narrows the area of business open to his rival, then the rival is a

person aggrieved. Thus it is seen that if a mark on the Register affects in some way or the other the business of another person, that person is an

aggrieved person . When that be so, he has a locus standi to file an application for rectification.

Applying the above principles, the applicant herein is a person aggrieved. It is not in dispute that both the applicants and the respondent are

engaged in the business of same class of goods. Admittedly both are dealing with medicinal products. It is not necessary that they should deal with

same goods, it may deal in same class of goods, By the mark remaining on the Register the applicant's injury is evident as the marks are identical. The

applicant herein is a person aggrieved and has a locus standi to file the application for rectification.

The other issue is whether the trade mark has been registered in contravention to the provisions of the Act. The respondent has made an

application for registration on 27/11/1998 as proposed to be used mark and the same has been advertised in the year 2003 as we did not have the

benefit of hearing them, we have perused the Notice of opposition filed in the year 2006, where we find no whisper of the date of commencement of

use. A mark acquires distinctiveness either by use or if it is a well known mark. Here we find from the records that the mark has not been put to use

till the year 2006 when the Notice of Opposition was filed and hence the mark could not have acquired distinctiveness. As the impugned trade mark

has not acquired distinctiveness after registration till the date of the application for rectification as per Section 32 of the Act, the registration is not

valid.

We would like to draw support of the judgment of the Supreme Court in the Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC

541 where the learned judges have laid down the following principles for the comparison of the marks while considering the similarity and the

confusion of the marks as follows.

In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know

English, then to apply the principle of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics

of the plaintiff's goods seem to overlook the ground realities in India while examining such cases in India, what has to be kept in mind in the purchaser

of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom

different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the

important tests which has to be applied, in each case is whether the misrepresentation made by the defendant is such a nature as is likely to cause an

ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion

would vary from case to case. However the appellants are right in contending that when medicinal products are involved, the test of be applied for

adjudging the notation of trade mark law may not be on a par with cases Involving non-medicinal products. A stricter approach should be accepted

while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-

medicinal products may only cause economic loss to the plaintiff, confusion between two medicinal products may have disastrous effects on health

and in some cases life itself Stringent measures should be adopted specially where medicines are the medicines of the lost resort as any confusion in

such medicines may be fatal or could have disastrous effect. The confusion as to the identity of the product itself could have dire effects on the public

health

On the above principles, if we look at the two marks, the marks are identical and purpose of ailment is not clear as neither the applicant has given

that in his application nor has the respondent, as the respondent has not appeared or filed counter statement. On comparison of both the marks, we are

of the view that both the marks are identical and hence the impugned mark cannot be allowed to be on the Register. The applicant's mark being prior

in the market has got to be protected. While the marks being identical, the possibility of confusion is not only in the trade but also in the minds of the

public.

Accordingly, the application for rectification by remaining/expunging the trade mark under No. 829609 in class 05 is allowed and the Registrar of

Trade Marks, Chennai is directed to remove the trade mark from the Register. No order as to costs.