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Judgment
Z.S. Negi, J
The present application is for removal of the Trade Mark No. 583227, registered in the name of the respondent No. 1, from the register of trade
marks or rectification of the register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
2 . It is stated that the applicant is engaged in the business of manufacturing and marketing pharmaceutical and medicinal preparation. The applicant,
Gujarat Technologies Ltd., originally incorporated on 22.6.1993 under the Companies Act, 1956 have changed its name to Medical Technologies Ltd.
Amongst the various pharmaceutical products manufactured and marketed by the applicant, have got the trade mark PROFOL which was introduced
in India by the predecessor of the applicant and have made application to the Drugs Controller India and have got the Product Permission dated
2.5.1998 from the Commissioner of Food and Drugs Control Administration, Gujarat State. Hematal Biologicals Ltd., the predecessor of the applicant,
have coined and invented the mark PROFOL in the year 1998 and subsequently, thereafter, from time to time has given license to use the mark
PROFOL to different companies. Hematal Biologicals Ltd., the predecessor of the applicant, gave license to use the trade mark PROFOL for the
purposes of manufacturing, marketing, selling and advertising the pharmaceutical product to M/s. Claris Lifesciences Limited by way of License
Agreement to Use Trade Mark dated 1.4.1999. The applicant company, as per the order dated 17.2.2000 of the High Court of Gujarat in
Amalgamation Company Petition No. 294/1999 (Scheme of Amalgamation of Hematal Biologicals Ltd. with Medical Technologies Ltd.), has become
the owner of trade mark PROFOL. The applicant gave license to Claris Lifesciences Ltd. (a company originally incorporated on 19.7.1994 as Oracle
Laboratories Ltd., which underwent change on 31.3.1999 to Core Laboratories Ltd., and on 1.4.1999 to Claris Lifesciences Ltd.) to manufacture the
products under the said trade mark and thus the applicant has used the mark since 2000 openly, continuously and uninterruptedly in the field of
pharmaceutical and medicinal preparation. The mark PROFOL has been granted drug manufacturing permission in various countries and the mark is
registered in India and is under registration in various other countries. It is further stated that the predecessor of the applicant, Hematal Biologicals
Ltd., filed application No. 803692 dated 24.5.1998 in class 05 for registration of trade mark PROFOL and the predecessor of the applicant in the year
1999 has given a license to use the said mark to Claris Lifesciences Ltd. In view of change in the proprietorship of the mark, the predecessor in title
i.e. Hematal Biologicals Ltd. had assigned the mark in favour of the applicant and the Form TM-16 dated 13.10.2001 filed for amending the name of
the applicant as proprietor of the mark is pending before the Registrar of Trade Marks.
3 . The applicant claims to have used the mark in respect of pharmaceutical and medicinal preparation, more particularly for the drug Propofol, which
is first adopted by the predecessor of the applicant in 1998 and subsequently used by the applicant since the year 2000 and the applicant have given
license to use the mark to their licensee, Claris Lifesciences Ltd. Due to very high standard quality and efficacy of products under the mark, the
demand of the product of the applicant is very high and the said trade mark has acquired tremendous reputation and goodwill in the market and as a
result of which the sale of the product under the said mark has crossed more than Rs. 22 crores. The licensee of the applicant has incurred more than
Rs. 1.5 crores towards sales promotional expenses.
4 . It is the case of applicant that the respondent No. 1, which is also engaged in same business as that of the applicant, have applied on 19.10.1992 for
registration of trade mark ROFOL word per se in respect of pharmaceutical and medicinal preparation and obtained registration under No. 583227 by
making false statement before the Registrar of Trade Marks about their intension to use the mark. The respondent No. 1 started manufacturing and
marketing its products only in the year 2004 with identical or deceptively similar mark and thereby created confusion and deception in the market and
the applicant had to file a Civil Suit No. 1244/2005 before the City Civil Court of Ahmedabad for passing off action and account of profit earned and
had also prayed for interim order of injunction, which was granted by the court and the respondent No. 1 was restrained from using the trade mark
ROFOL and committing an act of passing off their products under the mark ROFOL as and for the applicant's goods under the trade mark PROFOL.
The respondent No. 1 has gone in appeal before the High Court of Gujarat against the order of the City Civil Court and the Hon'ble High Court after
hearing the appeal in detail dismissed the same on 19.12.2005. After completion of arguments in the appeal, the respondent No. 1 realised that they
will not succeed in appeal, hence they moved the High Court of Bombay by a civil suit No. 3419/2005 filed on 14.5.2005 and have prayed for interim
injunction against the applicant herein on the basis of the registered trade mark under No. 583227. The applicant has appeared before the High Court
of Bombay and filed their reply and the matter is kept for hearing.
The applicant, claiming to be the person aggrieved, seek the removal of the trade mark No. 583227 in class 05 as of 19.10.1992 from the Register
of Trade Marks on the grounds, inter alia, that the trade mark ROFOL is registered without any intention to use by the respondent No. 1 in the year
1992; that the trade mark ROFOL of the respondent No. 1 is identical and deceptively similar with the applicant's trade mark PROFOL; that the
impugned entry made on the register is without any sufficient cause and the same is wrongly remaining on the register; that the registration is obtained
by the respondent No. 1 by playing fraud upon the Registrar of Trade Marks, by making false statement about their intention to use the mark and that
on the date of application of mark registered in favour of respondent No. 1, the said mark was not a trade mark as defined under the Act.
6 . The respondent No. 1 filed counter-statement to the application denying the material averments made in the application. It is stated that respondent
No. 1, for the last two decades, is one of the leading and well-known manufacturers and dealers in India in respect of medical and pharmaceutical
preparations. The respondent No. 1 has 30 brands currently being used in respect of pharmaceutical products in market in India and also in export.
The respondent No. 1 incorporated on 22.6.1982 as a private limited company under the Companies Act, 1956 and became a Deemed Public limited
company since 29.3.2001. Prior to 19.10.1992, and 14.8.1995, the respondent No. 1 honestly conceived and adopted the trade marks ROFOL and
PROFOL, respectively, in respect of their pharmaceutical preparations. The respondent No. 1 applied for registration of trade marks ROFOL under
applications No. 583227 dated 19.10.1992 and PROFOL under No. 676497 dated 14.8.1995 (proposed to be used) in respect of pharmaceutical
products falling in class 05 for which registration in respect of application No. 583227 was granted and application No. 676497 is pending for
registration; the said registration is renewed and subsisting and the mark is being used extensively, continuously and uninterruptedly through out India
since 16.10.2004 up to the order passed by the City Civil Court, Ahmedabad which order is under challenge before the Supreme Court. It is claimed
by the respondent No. 1 that they are the originators, first adopters and coiners and proprietors of both the word marks ROFOL and PROFOL. It is
the claim of respondent No. 1 that the two marks ROFOL and PROFOL are almost identical and in any event very close and their reputation in the
mark ROFOL also causes to their benefit in respect of their mark PROFOL and attaches to the same. By reason of extensive sales and due to
excellent quality and efficacy and extensive publicity of the mark ROFOL by the respondent No. 1, the mark has come to be associated exclusively
with the respondent No. 1 by medical professionals, medical and pharmaceutical traders and members of the public. The respondent No. 1 have
incurred expenses for popularizing the products bearing the trade mark ROFOL and have publicized the said trade mark in CIMS, Indian Journal of
Anesthesia. To prove their claim, the respondent No. 1 have filed specimen sales invoices, statement of sales figures for the year 2004 to 2005 and
promotional and advertising material, etc. for the product ROFOL.
7 . It is stated that the applicant claiming the user of their mark through their predecessor in interest from 1998 and alleging that the two marks were
deceptively similar filed suit No. 1244 of 2005 in the City Civil Court, Ahmedabad for passing off, damages and accounts of profit in which injunction
restraining the respondent No. 1 from using PROFOL was passed on 17.10.2005 and the injunction order is under challenged by way of SLP before
the Supreme Court. The Supreme Court on 30.1.2006 granted the special Leave and appeal admitted but no interim order passed except ordering that
the respondents shall maintain accounts. The Hon'ble Court has made clear that so far as the parties are concerned, whatever rights they have in law
may be urged in the proceedings pending before the other courts. Respondent No. 1 claimed that they are the prior adopters and proprietors of mark
ROFOL and the mark is distinctive and they have vested rights in the mark. The respondent No. 1 has intention to use the mark and they have already
started using the mark since 2004. The respondent No. 1 denies that the registration, which was obtained by them is causing confusion and deception
in the mind of the trade and the general public as alleged. Respondent No. 1 has denied that the entry made on the register is without any sufficient
cause and that the applicant is not the person aggrieved to institute the present proceedings against the respondent No. 1. The applicant filed their
reply to the counter-statement, stating that they deny each and every statements, averments and allegations made in the counter-statement to the
rectification application.
The matter came up before us for hearing on 4.2.2009 when Shri Vinodh Bhagat and Shri Jatin Trivedi, Advocates appeared on behalf of the
applicant and Shri Anu Janjandekar, Advocate appeared on behalf of the respondent No. 1.
Shri Vinodh Bhagat, learned Counsel for the applicant, submitted that the applicant is the party aggrieved and interested for the removal of the
impugned trade mark ROFOL registered in class 05 in favour of the respondent No. 1 and being aggrieved by the said order the present application
has been filed for removal of the mark from the register on the ground that the mark which was registered in the name of respondent No. 1 without
any bona fide intention to use the same in relation to the goods in respect of which registration was obtained.
Learned Counsel contended that the respondent No. 1 have made application for registration of trade mark ROFOL on 19.10.1992 in respect of
pharmaceutical and medicinal preparation by making false statement before the respondent No. 2 about their intention to use the mark applied for, as
from the facts of the case it is clear that they have not used the mark for sufficiently long period of 12 years till 16. 10.2004. He contended that it is
the admitted position of the respondent No. 1 that even after the issuance of registration certificate of the mark (as of 19.10.1992) on 14.9.2001 the
respondent No. 1 has not used the mark on or in respect of their product until 16.10.2004, as have been admitted by them by furnishing the sales figure
of their product only from the month of October 2004 to June 2005 and also averment is made in paragraph 6 of the counter-statement that the mark
was used since 16.10.2004. The averment made in paragraph 16 of the counter-statement also clearly shows that no product of respondent No. 1
bearing the trade mark ROFOL was available in the market till October 2004 although the respondent No. 1 claimed registration of the said trade
mark from the year 1992. There was no bona fide intention to use the mark at the time of making application and the respondent No. 1 have applied
for registration of the impugned mark just to block the same. Thus the claim of respondent No. 1 that they have adopted the impugned mark prior to
1992 is false and such claim is denied by the applicant. Learned Counsel submitted that the predecessor of the applicant applied for registration of
trade mark in May 1998 and thereafter the mark is extensively and continuously used in respect of the goods for which registration has been obtained.
He took us through to various Annexure to prove the use of trade mark PROFOL by the applicant and statement of sales turn over and promotional
expenses to show the extent of product sold and promotional expenditure incurred by the applicant.
1 1 . Learned Counsel contended that when the applicant established a very good market and demand of their product, the respondent No. 1 began
manufacturing and marketing their product only in the year 2004 with identical or deceptively similar trade mark ROFOL and thereby created
confusion and deception in the market and the applicant was compelled to file a Civil Suit No. 1244/2005 for passing off action and account of profit
earned by them and also prayed for interim order of injunction. The City Civil Court at Ahmedabad was pleased to restrain the respondent No. 1 from
using the impugned trade mark ROFOL and committing an act of passing off their product as and for the applicant's product under the trade mark
PROFOL. The intention of respondent No. 1 is to continue with their unlawful activity and use their identical and deceptively similar trade mark and
have taken contention in the said suit that they have started the use in the year 2004 and thereby have taken the defence under Section 28 of the Act,
which is nothing but mere sham and falsehood, that in view of the statutory right granted by the Registrar, they are entitled to use the mark. In support
of his contention, learned Counsel relied upon the judgment in Bimal Govindji Shah v. Panna Lal Chandu Lal 1997 PTC (17). He submitted that an
appeal preferred by the respondent No. 1 against the order of the City Civil Court along with a Civil Application No. 1158/2005 praying for vacation of
interim injunction granted by the trial court was, after hearing in detail, dismissed by the High Court of Gujarat. Learned Counsel, by drawing our
attention to the counter-statement, submitted that it is admitted by the respondent No. 1 in paragraph 5 of the their counter-statement that the two
marks PROFOL and ROFOL are almost identical and in any event close to each other, and as such the mark is causing confusion and deception has
been admitted by the respondent No. 1. This fact also establishes very clearly that their adoption of the impugned trade mark is dishonest and its
registration has been obtained by making false statement before the Trade Marks Registry. In fact, the respondent No. 1 has copied the applicant's
trade mark PROFOL by simply removing or deleting the letter 'P' for the same type of injection vials containing the drug for anesthesia/same product
Learned Counsel further contended that the trade channels, the distributors and the ultimate patients who are going to be administered the drug are
common, and use of such impugned mark during the course of trade is causing confusion and deception in the mind of trade and the general public.
It was contended that the respondent No. 1 has in their averment in the counter-statement admitted that they started using the trade mark since
October 2004 clearly shows that respondent No. 1 could not be called the proprietors of the trade mark ROFOL and that they had honest intention to
use the said mark. He went on to contend that on the other hand, the trade mark PROFOL is coined and adopted by the applicant in the year 1998
from the drug PROPOFOL and the mark has achieved distinctiveness and the mark is capable of distinguishing the products in the market, therefore,
the coining, adoption and use of the mark satisfies the requirements of Sections 9 and 18 of the Act. The entry of the trade mark of respondent No. 1
on the register is detrimental to the distinctive character and reputation of the applicant's trade mark PROFOL and as such it attracts the provisions of
Section 30 of the Act.
Learned Counsel contended that since the respondent No. 1 have not used the impugned trade mark till October 2004, they are not entitled to
interfere with the applicant's mark which give them superior right over the statutory right of holder of the registered trade mark ROFOL and even
Section 34 of the Act also provide that if by evidence prior user of the mark is demonstrated, then pleading of infringement or passing off could not be
accepted under the Trade Marks Act, 1999. The implication of this provision, therefore, is that the averment made in paragraph 20 of the counter-
statement by the respondent No. 1 that ""the registered proprietor can alone claim an exclusive right to use the trade mark in relation to the goods in
respect of which the trade mark is registered by the respondent No. 1 and none has any right to copy the said trade mark which is duly registered
could not be considered by this Appellate Board.
1 4 . Lastly, the learned Counsel took the plea that that the entry of impugned registration in the register is made without any sufficient cause and the
same is wrongly remaining on the register.
On the other hand, learned Counsel for the respondent No. 1 relying upon the decision in the Hardie Trading Ltd. and Anr. v. Addisons Paint &
Chemicals Ltd. MANU/SC/0705/2003 s,ubmitted that the onus to prove the person aggrieved and that the mark has not been used by the proprietor
for a continuous period of at least 5 years and three months prior to the date of application is on the applicant which the applicant has failed to
discharge, therefore this application is liable to be dismissed at the threshold. By drawing our attention to paragraph 12 of the counter-statement, he
submitted that the applicant is not the person aggrieved and hence, the rectification application should be dismissed with compensatory costs as they
have approached this appellate Board with unclean hands and by suppressing material and relevant facts. The ground of rectification is merely based
on non-user, apart from that the applicant has not shown that in some possible way the applicant may be damaged or injured if the trade mark is
allowed to stand on the register. Learned Counsel relying on the judgment of the Apex Court in Hardie Trading Ltd.'s case (supra); submitted that the
applicant ought to show something approaching a sufficient or proper reason for applying to have the trade mark expunged.
Learned Counsel for respondent No. 1 submitted that applicant's use of the mark is subsequent to the registration of the trade mark of the
respondent No. 1 and hence on this ground alone the present application be dismissed with costs. He went on to submit that there is no averment
made by the applicant that before adoption of mark they have caused search to made by the Trade Marks Registry to ascertain whether any
conflicting mark is registered or pending registration and they adopted the mark only on nil search report from the Registry. The applicant were aware
that a conflicting mark exists on the register, therefore they avoided causing a search, therefore they are dishonest adopters and their intention is to
trade upon the reputation of the respondent No. 1. The respondent No. 1 has used the mark since October 2004 and as provided by the definition of
the word 'trade mark', the respondent No. 1 had applied with an intension to use the mark and have already started using the same since October
2004. The use of the mark by the respondent No. 1 since October 2004 itself shows that the trade mark has been used and they had the intension to
use the mark, and therefore, they had applied and obtained registration. Placing reliance on the judgment of Madras High Court in Mohan Goldwater
breweries (Private ) Ltd. v. Khoday Distilleries Private Limited and Anr. 1977 IPLR 83, learned Counsel submitted that for the purpose of registration
of a trade mark, the rights of the parties had to be determined as on the date of registration, and if prior to the date of application no one else had used
or proposed to use ROFOL as a trade mark in class 05, the respondent No. 1 could maintain its application under Section 18(1) of the Act and the fact
that it did not use the mark till 2004 do not prove that it had no intention to use the mark and that the subsequent use of the deceptively similar mark by
the applicant could not militate against or take away the rights acquired by the respondent No. 1 on the date of making its application. The registration
certificate was issued to the respondent No. 1 only in the year 2001 and they have started using the registered trade mark since October 2004 till the
date of passing of injunction order by the City Civil Court, Ahmedabad. Relying on the judgment in Hardie Trading Ltd.'s case (supra), learned
Counsel submitted that the applicant has failed to show that they are the person aggrieved and to prove that the mark has not been used for 5 years
and three months prior to the date of filing of the rectification application. The allegation that the respondent No. 1 obtained the registration of the
mark without intention to use it is baseless.
Learned Counsel next submitted that the respondent No. 1 is unaware whether the applicant has established very good market and demand of
their product and as such the respondent No. 1 do not admit the claim of the applicant. Learned Counsel submitted that the mark of the respondent
No. 1 has been adopted honestly and independently without any reference to any other third party's mark and they are the first adopters, coiners and
proprietors of both the trade marks ROFOL and PROFOL; the mark ROFOL is registered as of 19.10.1992 and the same has been popularized by
incurring expenses on advertisements and the mark is in use extensively, continuously and uninterruptedly through out India since 16.10.2004 until
injunction order passed by the City Civil Court, Ahmedabad and the same has come to be associated exclusively with the respondent No. 1. In the suit
for passing off filed by the applicant claiming user of their impugned mark through their predecessor in interest from 1998, the respondent No. 1 had
taken up several contentions, inter alia, that the respondent No. 1 were the prior adopter and proprietors of the mark ROFOL and that they had vested
rights therein, etc. and the order passed in that suit is under challenge before the Supreme Court. Learned Counsel submitted that the respondent No.
1 deny that that the registration of the mark obtained by them is causing confusion and deception in the mind of trade and the public as alleged by the
applicant because the applicant has no vendible product in the market which is originating from them.
1 8 . Learned Counsel for the respondent No. 1 submitted that the they are the proprietor of the trade mark ROFOL as their mark is distinctive and
the same is adopted honestly and independently without reference to any third party's trade mark, therefore, the respondent No. 1 could rightly claim
proprietary right in the trade mark. It was the submission of the learned Counsel that the registered proprietor can alone claim exclusive right to use
the trade mark in relation to the goods in respect of which the trade mark is registered by the respondent No. 1 and no one has any right to copy the
duly registered trade mark of the respondent No. 1 and the respondent No. 1 is entitled to and claim exclusive statutory protection for the trade mark
ROFOL under the Act. The respondent No. 1 has coined and adopted the mark first and as such they are the rightful proprietors of the mark.
Learned Counsel submitted that as he has already submitted that the respondent No. 1 is the registered proprietor of the trade mark, therefore, the
respondent No. 1 can alone claim an exclusive right to use the trade mark in relation to the goods for which registration of trade mark has been
obtained by them and the respondent No. 1 as a registered proprietor of such trade mark is entitled to and can claim exclusive statutory protection for
the trade mark ROFOL under provisions of the Act. Learned Counsel further submitted that the respondent No. 1 denies that entry of their mark is
made without any sufficient cause and the mark is wrongly remaining on the register of trade marks.
After hearing the arguments of both the parties and after perusal of records, the first question to be determined is whether the applicant is the
person aggrieved under Sections 47 and 57 of the Act to file the present application. A trader dealing in the same class of goods to which the
registered trade mark relate, or persons who are in some way or the other substantially interested in having the mark removed from the register, are
persons aggrieved and include persons who opposed the application for registration of the applicant. The test for such determination is propounded in
Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the rivals in the same trade who are aggrieved by the entry of the rival's mark in
the register or person whose legal rights would or might be limited if the mark remains on the register, he could not lawfully do that which, but for the
existence of the mark on the register he could lawfully do. The Hon'ble Supreme Court in National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg.
Co. Ltd. and Anr.PTC (Suppl) (1) 586 (SC )at p.593 has observed that the expression ""aggrieved person"" has received liberal construction from the
courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is
taken or threatened by the registered proprietor of such a trade mark. Person aggrieved includes rivals in the same trade who are aggrieved by the
entry of rival's mark in the register of trade marks or persons who are in some way or the other substantially interested in having the mark removed
from the register or persons who would be substantially damaged if the mark remained on the register. Though the application does not contain any
specific averment that both parties are in the same trade, but it could be inferred from the pleadings that the applicant is in the same trade as that of
the registered proprietor and the registered trade mark of the registered proprietor/respondent No. 1 limits the rights of the applicant to carry on the
business of manufacturing and market pharmaceutical and medicinal preparation and as such the applicant is prima facie aggrieved by the entry of the
rival's mark on the register of trade mark. The applicant is in one way or the other substantially interested in having the mark of respondent No. 1
removed from the register. The applicant, in our opinion, is prima facie the person aggrieved. As has been held that where a person shows himself to
be a person aggrieved by making necessary statements in the application for rectification in that behalf, such person would obviously have the locus or
purpose of making an application for rectification (see Ciba Ltd. v. M. Ramlingam MANU/MH/0021/1958, )so is the applicant herein has locus standi
to file and maintain the present application. The judgment in the Hardie Trading Ltd's case (supra) relied on by the learned Counsel for the respondent
No. 1 will be of no assistance to him as the rectification is not merely on the ground of non-user but other grounds have been specified and as such the
facts are distinguishable.
The next main issue is whether the respondent No. 1 has applied for registration of the impugned mark without any bona fide intention to use the
mark in relation to the goods for which the registration of impugned mark is obtained and whether the impugned mark is liable to be removed from the
register under Section 47 of the Act. In the case on hand the respondent No. 1 made application, under Sub-section (1) of Section 18 of the Trade and
Merchandise Marks Act, 1958, for registration of the impugned mark on the basis of proposed to be used. The language used in Section 18(1) clearly
provide that any person claiming to be the proprietor of a trade mark whether used or proposed to be used by him shall apply to the Registrar,
therefore actual user is not necessary for acquisition of proprietary right in a trade mark and an intention to use and register the trade mark appears to
be sufficient. The High Court of Madras in the case of Mohan Goldwater Breweries (Private) Ltd. (supra) while considering the issue, amongst
others, whether the applicant had not acquired any proprietary right in the trade mark in question either on the date of application or at any subsequent
date and, therefore, they were not entitled to have the trade mark registered, held as under:
...The only circumstance relied on by the opponents as indicating that the applicants had no immediate intention to use the trade mark is that even after
the application for registration of the trade mark they had not chosen to actually use the trade mark. I am, however, of the view that this circumstance
will not disprove any intention on the part of the applicants to use the trade mark. The application for registration of the trade mark having been filed, it
might be that they waited till the trade mark is actually registered. It is true that even after the trade mark had been registered, the applicants have not
used the trade mark. But the opponents having filed these appeals challenging the decision of the Registrar, the applicants might have postponed the
user till the appeals are disposed of in their anxiety not to take any risk. This conduct of the applicants in not using the trade mark since the date of the
application will only indicate that they are not inclined to take any risk pending the decision of the Registrar of Trade Marks especially when the
registration of the trade marks has been opposed by the appellants on the ground that they have already adopted and used trade mark in connection
with the liquor manufactured by them.
In Kerly's law of Trade Marks and Trade Names 9th edition page 27 it has been stated in paragraph 48 that though at common law no protection
could be secured for a mark which had not been used, the statutes dealing with registration of trade marks always encourage registration by saying
that actual use is not necessary for registration as the traders are generally anxious before adopting and using a mark as a trade mark to ascertain
whether it is registrable that the mark applied for may be one which is already in use or may be one which is proposed to be used by the applicants
that if the applicants do not use the mark, they must have at that time of the registration some definite and present intention to deal in certain goods or
description of goods and not a mere general intention of expanding their business at some future time to anything which he may think-desirable, and
that the intention must be to use the mark as a trade mark by the applicants themselves in respect of the goods for which the registration is sought. Dr.
S. Venkateswaran, in his treatise on the law and practice under the Trade Marks Act at page 311 says that in determining whether an applicant for
registration of a trade mark had intended to use the mark in relation to the relevant goods as to justify registration, regard must be had to the
difficulties and uncertainties of the time and a bonafide intention on the part of the applicant to use the mark as soon as conditions allow may be
sufficient to support the application.
It is true, the burden of proving that the trade mark in respect of which registration is sought is entitled to go on the register is on the applicant and if
there be any doubt in the matter the application will have to be refused. It is also well established that it is incumbent on the applicant to establish that
he is the proprietor of the mark before his mark could be registered. In this case the applicants are persons who have proposed to use the expression
Silver King"" as a trade mark and sought for registration of the same. On the date of the application for registration of that mark no one else had
designed and proposed to use the same. Of course they have not chosen to use the trade mark either before or after the application for registration
was filed. But as already stated, user is not necessary for filing an application having regard to the language of Section 18. If a bonafide intention to
use the trade mark immediately in connection with the goods manufactured is established, that will enable the applicant to maintain an application for
registration under Section 18. I am not prepared to accept the contention of the appellants that non-preparation and non-user of the mark from the
date of the application till the application came up for hearing will show that the applicants have really no intention to use the trade mark. The
applicants had sufficient interest in the mark so as to enable them to file an application under Section 18 as on 10th November, 1969, when no one had
used or proposed to use the trade mark in question.
In the application for registration the applicant must have a definite and bona fide intention to use the mark and if the mark is registered without
any bona fide intention to use it in relation to the goods, such registration can be removed from the register of trade marks under Section 47 of the
Act. Clauses (a) and (b) of Sub-section (1) of Section 47 of the Act provide for two alternative grounds for removal of the impugned mark from the
register viz. it is required to be shown by the applicant under Clause (a) that the impugned mark was registered without any bona fide intention that it
should be used in relation to the goods in respect of which registration thereof had been obtained and also that there has in fact been no bona fide use
of the mark in relation to those goods prior to filing of the rectification application. In other words both the grounds specified in Clause (a), that the
impugned mark was registered without any bona fide intention that the impugned mark should be used in respect of those goods and that there has in
fact no bona fide use three months prior to filing of the application, should cumulatively exist. Existence of one of the grounds alone will not be
sufficient to order for removal of the impugned mark. In the second alternative ground under Clause (b), the applicant has to show that up to the date
three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the
register or longer has elapsed on during which the trade mark was registered and during which there was no bona fide use thereof in relation to those
goods by any proprietor thereof for the time being.
In the rectification application, the onus is on the applicant as has been held by the Apex Court in the Hardie Trading Ltd.'s case (supra) as under:
Thus before the High Court or the Registrar directs the removal of the registered trade marks they must be satisfied in respect of the following:
(1) that the application is by a ""person aggrieved"";
(2) that the trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the
application;
(3) there were no special circumstances which affected the use of the trade mark during [his period by the proprietor.
27 . The onus to establish the first two conditions obviously lies with the applicant, whereas the burden of proving the existence of special
circumstances is on the proprietor of the trade marks. These conditions are not to be cumulatively proved but established seriatim. There is no
question of the third condition being established unless the second one has already been proved and there is no question of the second one even being
considered unless the High Court or the Registrar is satisfied as to the locus standi of the applicant.
But if the ground for rectification is merely based on non-user i.e. under Section 46 of the Act, that is not really on account of any public mischief
by way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affected to
apply for its removal. An applicant must therefore show that in some possible way he may be damaged or injured if the trade mark is allowed to stand;
and by 'possible' I mean possible in a practical sense, and not merely in a fantastic view.... All cases of this kind, where the original registration is not
illegal or improper, ought to 'be considered as questions of common sense, to a certain extent, at any rate: and I think that applicants ought to show
something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly, is not sufficient reason that they are at
loggerheads with the respondents or desire in some way to injure them.
In this case, the grounds mentioned in Clause (a) of Sub-section (1) of Section 47 of the Act do not cumulatively exist. The applicant has averred at
paragraph 12 of the application ""that the mark which was registered in the name of respondent No. 1 in respect of the goods pharmaceutical
preparation, which is registered on the application made by the respondent without any intention to use the mark in the year 1992 and have not used
the mark till the year 2004"". The respondent has by filing certain specimen copies of invoices from 30.10.2004 to 6.6.2005 proved that they have been
using the mark since 2004 (before the date of filing of present application) till injunction was granted against them by the court. The respondent No. 1
has also filed specimen of promotional and advertising material, proof of publicizing their trade mark in CIMS, Indian Journal of Anesthesia and
statement of sales of products with brand name ROFOL for the periods October 2004 to March 2005 and April 2006 to June 2006 (sic 2005), though
the statement of sales of is not certified by the Chartered Accountant. Though the respondent No. 1 has not proved user for certain period and have
not given any explanation for such non-user yet the allegation that the respondent No. 1 has obtained registration of impugned mark without any bona
fide intention to use is unsustainable because if the respondent No. 1 has developed a drug and applied for registration of trade mark and got the mark
renewed, as such renewal is evident from the Exhibit-C4, it is difficult to agree or believe that there was no bona fide intention to use the impugned
mark, more so when it is not the case of the applicant that the respondent No. 1 has abandoned the impugned mark. Further, the use of the impugned
mark by the respondent No. 1 since 2004 negates the allegation of the applicant. Even if for the sake of argument we assume that the respondent has
no bona fide intention to use, no provision has been brought to our notice which empowers this Appellate Board to remove the mark on such ground
without having regard to the statutory period specified under Section 47 of the Act. The cumulative existence of both the grounds of Clause (a) of
Sub-section (1) of Section 47, referred to above, are not found in this case, hence, the alternative ground under Clause (a) is not applicable in this
case. It is undisputed that the respondent has got the impugned mark registered as on 19.10.1992 and the same was registered on 14.9.2001. It is
settled that the expression 'trade mark was registered' occurring in Clause (b) of Sub-section (1) of Section 47 of the Act would mean that the trade
mark was actually put on the register, having regard to the definition of ""registered trade mark"" in Section 2(1)(w) of the Act. Thus the statutory
period of 5 years and three months would be computed from the date on which the trade mark was actually entered in the register. In this case, the
impugned mark was entered in the register on 14.9.2001 and the statutory period of 5 years three months would complete on 15.12.2006. The present
application has been filed on 1.3.2006 that is say the present application was filed about 9 months before the completion of the statutory period
specified under the Act. Thus the application is premature. Even the respondent No. 1 has proved the use of the impugned mark since 2004 till the
injunction was granted by the court. Hence, no relief can also be granted under Clause (b) of Sub-section (1) of Section 47 of the Act.
On the other hand the applicant claimed user of its trade mark PROFOL openly, continuously and uninterruptedly since the year 2000. The
applicant has made specific averment in the application that from time to time license is given to use the trade mark PROFOL to different companies
and after amalgamation, the applicant have given license to use the said mark again to Claris Lifesciences Ltd. A copy of license agreement dated
1.4.1998 between predecessor of the applicant and M/s. Core Healthcare Ltd. would show that the said predecessor before actually applying for
registration of trade mark PROFOL gave license for manufacturing marketing, selling and advertising pharmaceutical product to M/s. Core
Healthcare Ltd. This is clearly against the provisions of Section 18 of the Act which says that any person claiming to be proprietor of a trade mark
used or proposed to be used by him (emphasis supplied) who is desirous of registering it, shall apply to the Registrar, whereas the said predecessor
had applied registration to give the mark for use to the licensee (as given in (i) to the preamble to the agreement). Annexure-J, containing copy of
license agreement dated 1.4.1999 shows that the predecessor of the applicant at the stage of application for registration of trade mark PROFOL gave
authorization/right to licensee (Claris Lifesciences Ltd.) to use the said trade mark for the purpose of manufacturing, marketing, selling and advertising
the pharmaceutical product. The licensee has been using the trade mark and selling the product under its name. Even the permission to manufacture
Profol Injection is applied by and issued to M/s Core Healthcare Limited by the Drug Controller India and certain sale invoices have issued by that
company. The latest copy of invoice dated 7.4.2004 is from the Licensee. The sales data, promotional expenses and invoices (except certain invoices
from Core Healthcare Ltd.) are in the name of the licensee. From the documents here before referred, it is abundantly clear that the applicant is, since
adoption of the mark PROFOL, neither using itself the mark nor used through a registered user. There is nothing to show real trade connection
between the applicant and the goods under the trade mark PROFOL. The proposition of law appears to be that that trade mark cannot be got
registered and held by persons as 'investors' only and with no intention whatsoever to use the same in connection with any goods and services see
para 19 in Sun Pharmaceuticals Industries Limited v. Cipla Limited MIPR 2008 (3) 0384 T. he applicant cannot claim user as it has no product in the
market which can be claimed to be originated from it and whatever vendible product under the name Profol is available originates from the licensee
that is manufactured, marketed, sold and advertised are by the licensee and the product has no trade connection or association with the applicant since
1998. There is nothing in the pleadings to show that the licensee is a registered user and the applicant has no control or supervision on the quality or
manufacturing of the medicinal product. When the applicant has not used the mark since its adoption till now, it cannot be a person aggrieved to
institute this proceeding and no locus to be heard.
The next issue is whether the two marks are identical or deceptively similar to each other and similarity of goods covered by them. It is worth
noting that the respondent No. 1 in paragraph 5 of the counter-statement has admitted the two marks PROFOL and ROFOL are identical by stating
that the two marks are almost identical and in any event close to each other. In view of this admission, we are not required to go into this issue. In
such a situation, the next question that arises is then who is the prior and bona fide adopter and user of the mark. We have in the above paragraph
held that the applicant has adopted the mark in 1998 but not using the mark itself in respect of goods for which it has obtained registration and
whereas the respondent No. 1 has adopted the impugned mark much prior to the applicant but not used until 2004 (though abandonment is not a
ground here) and the statutory period of 5 years three months had not completed before filing the present application. We have already seen that
though the applicant claims the user of the mark since the year 2000, the documents do not prove that the applicant is using the mark by itself in
relation to goods for which it registration is obtained. When that is so, the applicant cannot allege that the use of mark of the respondent No. 1 is
causing confusion or deception in the mind of people and trade. For the purpose of causing confusion or deception, there should be vendible goods
originating from, or associated with, the applicant. The onus to prove that the use of mark of the respondent No. 1 during the course of trade is
causing deception or confusion or like to cause confusion or deception is on the applicant which it has failed to discharge.
We have already stated that the respondent No. 1 has adopted the impugned mark and got it registered much prior to the applicant. Hence, the
allegation made by the applicant that the impugned mark dishonestly copied by the respondent No. 1 by simply removing or deleting a letter/word is
unsustainable because of the reason that a prior adopter of mark in no way can copy a trade mark which was not in existence at the material time. It
is fallacious to presume that the respondent No. 1 while adopting its mark ROFOL in 1992 might have foreseen or visualized that the applicant would
in 1998 adopt its trade mark PROFOL. We are inclined to agree with the learned Counsel for the respondent No. 1 that the adoption of mark by the
applicant is not bona fide and honest as the applicant has not stated that they caused a search to be made by the Registry of Trade Marks regarding
availability of the mark for registry. If the applicant had got the search made they would have come to know that a conflicting mark is already on the
register or pending registration. They have knowingly that a conflicting mark is already there, adopted the Mark PROFOL, hence the allegation of the
applicant that the respondent No. 1 has copied their mark by simply deleting the letter 'P', the same recoils to the applicant. The ground of dishonest
adoption of mark by the respondent No. 1 is unsustainable.
The allegation of the applicant that the entry of impugned mark was made on the register without any sufficient cause and the same is wrongly
remaining on the register has been not substantiated. Likewise, the allegation that that the respondent No. 1 has obtained by making false statement
regarding their intention to use the mark before the Trade Marks Registry remains unsubstantiated either by production of copy of Registrar's order
whereby registration was allowed or any other cogent order. We have already stated that the use of mark commenced in the year 2004 by the
respondent No. 1 negates that allegation.
27 . In view of the above, the rectification application fails and consequently, the same is dismissed. However, there shall be no order as to costs.