AI Structured Summary
Not yet generated for this judgment
Judgment
S. Usha, Technical Member
The applicant is a company incorporated under the Indian Companies Act, 1956 had been carrying on business of marketing and manufacturing
pharmaceutical and veterinary preparations and other cognate and allied goods since more than a decade through its predecessor. The predecessors
had adopted the trademark 'ANTIFLAM' in respect of one of its pharmaceutical and veterinary injection.
The predecessor namely, M/s Belco Pharma had entered into an agreement with the applicants herein on 17.10.2001 for manufacture and sale of
goods whereby the predecessors had given exclusive ownership rights of the trade mark to the applicants herein.
The applicant has been getting the pharmaceutical products manufactured on loan license from the predecessors under manufacturing license No.
484-L-B (LI) dated 14.11.2002 under the assistance of M/s Shell Pharmaceuticals and M/s Supermax Drugs & Pharmaceuticals Pvt. Ltd. The trade
mark 'ANTIFLAM1 qualifies to be a well known mark on account of extensive and exclusive use for more than a decade.
The applicants and their predecessors have been advertising its products under the said trade mark by way of various promotional campaigns. The
applicant has spent huge amounts of money in advertising and other trade promotional activities. The yearly sales turnover of the applicants runs to
several lakhs of rupees. The applicant's mark has acquired good reputation and valuable goodwill among the public.
The respondents have adopted the impugned trade mark 'NT FLEM' under No. 1206069. The applicants herein being aggrieved by the respondents
adoption of a phonetically similar trade mark have filled this application for rectification of the trade mark under Section 57 of the Trade Marks Act,
1999 (hereinafter referred to as the 'Act') on the grounds hereunder:
(a) The respondents being aware of the applicant's well known trade mark have adopted the impugned trade mark, have falsely represented before
the Registrar and have obtained registration.
(b) The rival goods are identical having identical trade channels and would definitely lead to confusion and deception among the unwary purchasers.
(c) The impugned trade mark 'NT FLEM' is visually, phonetically and deceptively similar to the applicant's prior adopted trade mark 'ANTIFLAM'.
(d) The respondent's adoption of the impugned trade mark is malafide and dishonest.
(e) The registration is in contravention of the provisions of Sections 9, 11, 18(1) and other provisions of the Act.
(f) The adoption and registration of the impugned mark is only to earn illegal and undue gains.
(g) The impugned trade mark was not distinctive or capable of acquiring distinctiveness.
(h) The impugned trade mark has been wrongly remaining on the Register affecting the purity of the Register.
The respondent filed their counter-statement denying the material allegations made in the application. The respondent's preliminary objection was
that the application was not maintainable; that the applicant had suppressed the relevant facts; that the respondent adopted the trade mark in the year
2003 and applied for registration with a view to protect the same; that the applicant had not opposed the registration; that the respondent is marketing
its products bearing the trade mark 'NT FLEM' only in Aligarh and trading within the state of Uttar Pradesh; that the applicant's trade mark
'ANTIFLAM' is not distinctive and the applicants have no claim to be the proprietor of the said trade mark; that the rival marks 'ANTIFLAM' and
'NT FLEM' are not deceptively similar; that the applicant being an ' infringer is not a person aggrieved; that the respondent had adopted the trade
mark 'NT FLEM' honestly and has a definite claim to be the proprietor of the trade mark; that the registration of the impugned trade mark 'NT FLEM'
is in conformity with the provisions of the Act; that the respondent's trade mark has acquired distinctiveness; that the respondent's trade mark has
gained reputation and goodwill by use and there is no likelihood of confusion or deception and that the respondent is entitled for registration under
Section 12 of the Act.
The respondent had further stated in the counter-statement that there is no evidence to prove that M/s Belco Pharma was the applicant's
predecessor. The applicants have not produced any evidence to prove user since 1994. Sales figures are also not supported by any documents. The
applicant cannot be an aggrieved person as an infringer themselves. The respondent denied the fact that applicant had issued a notice to the Drug
Controller to cancel the drug license granted to M/s Pace Health Care and M/s Win Drugs Ltd., which was not supported by any documentary
evidence. The registration was granted following the due process of law and it was not dishonest. The registration was not in contravention of the
provisions of Section 9, 11, 18 (1) and other provisions of the Act. The respondent further stated that there was a Civil Suit No. 20 of 2006 before the
Additional District Judge, Delhi pending between the parties and denied the averment that no litigation was pending. The respondent, therefore, prayed
that the application be dismissed with costs.
The applicant herein filed their reply statement to the counter-statement reiterating whatever had been stated in the application for rectification.
After completion of the formal procedures of filing the pleadings, we have heard the matter on 16.10.2008 at the Circuit Bench at Delhi. Shri
Kamal Garg, learned Counsel appeared on behalf of the applicant and Shri U.S. Sharma, learned Counsel appeared on behalf of the respondent.
The learned Counsel for the applicant contended that the applicants were prior in adoption and use of the trade mark. Their predecessor had
adopted the trade mark in the year 1993 and the applicants in the year 2001 and there was an agreement between the applicants and the predecessor
by which the applicants had acquired the right to use the trade mark since the year 2001. The agreement was brought to our notice which was filed as
Exhibit B at page 25. He also pointed out to clauses E and F of the said agreement wherein M/s Belco Pharma, the applicant's predecessor, had given
exclusive ownership right of the trade mark in favour of the applicant.
The applicant's further contention was that the goods bearing the trade mark 'ANTIFLAM' had acquired good reputation among the public which
was evidenced by the sales figures mentioned in the application. The applicant is an aggrieved person as the respondent had adopted and used a
phonetically, visually and deceptively similar trade mark subsequent to the applicant's earlier use of the trade mark.
The applicant also pointed out that the respondent's affidavit was not properly signed. The applicants brought to our notice the impugned
registration certificate filed by respondent along with the counter-statement. The applicants also pointed out that the respondents though claimed user
since 2003 have not produced any documents to prove their user since 2003 whereas the latest document produced is of the year 2005 only. So the
user claimed since 2003 is false.
The applicants relied on various judgements in support of their case.
(i) PTC (Suppl.) (1) 720 Del DB) Century Traders v. Roshal Lal Duggar & Co., was relied upon to say that a single actual user with an intent to
continue to use is enough to claim a relief.
(ii) 2001 PTC 200 SC Cadila Health Care Ltd. v. Cadial Pharmaceuticals Ltd., was relied upon with reference to factors to be considered for deciding
the question of deceptive similarity.
(iii) PTC (Suppl.) (1) 258 (SC) K.R. Chinna Krishna Chettiar v. Ambal and Co. Madras and Anr. was relied upon to say that the resemblance
between the two marks must be considered with reference to the ear as well as the eye.
The learned Counsel for the respondent vehemently opposed the application for rectification. The learned Counsel also pointed out that the
agreement dated 17.10.2001 filed as Exhibit B at page 25 did not create proprietary right to the applicant's predecessor. He further submitted that the
agreement was only for manufacturing. He brought to our notice the definition of 'Assignment' as per Section 2(1) (b) of the Act. The counsel pointed
out to the letter dated 01.10.2002 filed as Exhibit C to the application at page 30B and submitted that the withdrawal of the brand names by the
predecessor to the applicant was only in the year 2002 and it was false on the part of the applicants to claim user since 2001. He also pointed out to
various discrepancies in the documents filed by the applicants. The counsel further submitted that the applicants have not filed any documentary
evidence to prove their reputation acquired by sale of their goods bearing their trade marks.
The counsel for the respondent relied on various judgement in support his case.
(i) Kabushiki Kaisha Toshiba v. TOSIBA Appliances Co. and Ors. was relied on to say that a person who suffers damage or injury is person
aggrieved.
(ii) 1989 PTC 98 Capital Plastic Industries v. Kapital Plastic Industries and 1994 (30) DRJ Ved Prakash v. Samir Kumar and Ors. were relied on to
say that a pirator himself cannot claim for any relief.
(iii) 2001 (2) SCALE Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited was relied upon with reference to factors to be considered for
deciding the question of deceptive similarity between two marks.
In rejoinder the counsel for the applicant submitted that the respondent has not submitted as to when the respondents had started using the mark
nor have they denied the contention of the applicants that there is no proof of user between 2000 and 2005.
We have gone through the pleadings and have considered carefully the arguments of both the parties.
We shall first decide the issue as to whether the applicant is a person aggrieved. The expression ""Aggrieved Person"" has been liberally construed
in several cases. The following persons are held to be aggrieved person:
(a) A person who is engaged in the same trade as a registered proprietor and who is likely to be injured or harassed in his trade by the registration
complained of.
(b) Any person whose legal rights are limited by the existence of the entry on the Register so that he could not lawfully do that which but for the
existence of the mark up on the Register, he could lawfully do.
(c) A person whose registered trade mark shows prima facie a sufficient similarity to the respondent's registered trade mark to make it possible that
his trade may be interfered with by the use of the other mark.
(d) A person who desires to use the registered trade mark not as a trade mark but as a description of his goods.
(e) Any person who prior to the date of registration of the mark has registered or used the same or nearly resembling mark as a trade mark or used it
as a descriptive of the goods is entitled to continue to use the mark in accordance with the Act or any other law. The grievance must, however, be
such as is likely to inflict upon the applicant some damage in the legal sense. The applicant must show that the possibility of damage is due to the
particular entry on the Register and not merely that there may be some damage by the respondent having any trade mark on the Register.
In the instant case on hand, it is clear that the goods are same, the rival marks are phonetically similar and above all on perusal of the records, it is
clear that the respondents are subsequent users. When the applicants qualify all the above mentioned norms to be an aggrieved person, we hold that
the applicants are aggrieved and have a locus standi to maintain the application for rectification.
A trade mark qualifies for registration only if it is distinctive or capable of being distinguished. Descriptive names, devices, shape of goods etc., are
not considered capable of distinguishing. Such marks can be registered if it can be shown that they have acquired a distinctive character as a result of
use. Some marks are not prima facie capable of distinguishing but which can be registered if it can be shown that they have acquired a distinctive
character as a result of use of the mark in relation to particular goods or services. The respondents have stated to have adopted the trade mark in or
about 13th June 2006 and the application has been made on the same day. The mark, therefore, cannot be said to have acquired distinctiveness. Apart
from this fact, on perusal of the respondent's own document, at page 3A of set of documents along with counter statement, contain a copy of the
complaint addressed to the S.H.O., P.S. Prashant Vihar, Delhi dated 24.02.2006 wherein it is stated that the respondents are doing business of
marketing of drugs under the name of 'NT FLEM' since April 2005. This fact proves that the applicant's have played fraud on the Registrar of Trade
Marks and obtained registration.
While deciding the issue of similarity and its effects the test would be to see whether the misrepresentation is of such a nature as to cause any
confusion and also other surrounding facts. It was observed by Parker J. in Re Pianotist Cos' Application (1906) 23 RPC 774 while comparing two
words:
You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each if those trade marks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.
Kerly on Trade Marks, 8th Edition p. 400 - For deceptive resemblance two important questions are: ""(1) who are the persons whom the
resemblance must be likely to deceive or confuse, and (2) What rules of comparison are to be adopted in judging whether such resemblance exists. As
to confusion, it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinks that it differs from the mark on
goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection.
It is important that in the case of medicinal products care has to be taken to prevent any confusion or deception. Confusion in such products can
have serious consequences for the patient. Based on the factors to be determined in deciding the deceptive similarity as decided by the Hon'ble
Supreme Court in the well known Cadila judgement (Supra) we are of the view that the impugned trade mark 'NT FLEM' cannot be allowed to
remain on the Register and has got to be rectified/removed from the Register.
The other contention of the respondent was that on perusal of the search report from the Trade Marks Registry, it is seen that already
'ANTIFLAM' is being used by several others and the applicant themselves being a pirator cannot claim any relief. Following the principles laid down
by the Hon'ble Supreme Court in Corn Products case, we are of the view that the mark on the Register of Trade Marks either pending or registered
will not prove their user. In such a case, we do not agree with the respondent's contention that the applicant cannot claim any relief as a pirator.
In the light of the above findings, we are of the view that the impugned registration of the trade 'NT FLEM' registered under No. 1206069 in class
5 be removed/rectified from the Register of Trade Marks. The application for rectification is, therefore, allowed. The Registrar of Trade Marks is
directed to remove the trade mark 'NT FLEM' under No. 1206069 in class 5. There shall be no order as to costs.