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Judgment
S. Usha, J
Application for removal of the trade mark ""Medimol"" under No. 678097 in Class 5 under the provisions of the Trade Marks Act, 1999 (hereinafter
referred to as the 'Act'). The applicants are manufacturers, marketers and exporters of pharmaceutical and medicinal preparations for over three
decades. The applicant's predecessors invented, coined and adopted the mark ""Medomol"", 'Medo' from their trading style Medopharm. 'Mol' is derived
from the generic drug 'paracetamol' which is commonly used for fever, headaches and other minor aches and pains. The mark ""Medomol"" being
invented, coined, arbitrary and non-descriptive is endowed with a high degree of inherent distinctiveness.
2 . The trade mark ""Medomol"" was used by the applicant since 1970. The applicant filed an application for registration of the trade mark Medomol on
19.10.1976 as 'proposed to be used' under No. 319599 in Class 5. By such uninterrupted and continuous use since 1976 the mark has acquired a
secondary meaning.
3 . In the year 2004, the applicant became aware of the trade mark Medimol by the 2nd respondent. On 17.9.2004, the applicant immediately issued a
legal notice. On 29.4.2006 the applicant again issued a legal notice. The 2nd respondent received the said notice and replied by letter dated 19.6.2006
wherein they had stated that they are registered proprietors of the trade mark Medimol. The applicant called for the particulars of the registration from
the respondent for which there was no reply from the respondents. Thereafter the respondents stopped the sales.
The impugned trade mark is a virtual, identical and deceptively similar trade mark. The rival marks are Medimol and Medomol. The goods are
identical. As the entry in the register will cause prejudice and loss to the applicant, the applicants are ""persons aggrieved"" as per the provisions of the
Act.
5 . The impugned trade mark is liable to be removed/cancelled on the grounds that there was no bonafide use, no bonafide intention to use the
impugned trade mark; the respondents have adopted the malafide intention with a view to infringe and ride upon the goodwill earned by the applicants,
the registration is in contravention of the provisions of Sections 9(1)(a), 9(2)(a), 11(1), 11(2), 11(3)(a), 18(1), 27, 28 and 29 of the Act. The impugned
trade mark has not acquired distinctiveness and is therefore in breach of Section 9(1)(a) of the Act. The rival marks are deceptively similar and is
likely to cause confusion and deception among the public. The applicant's trade mark Medomol is a well known mark.
6 . The registration has been obtained by marking false statements. The registration has been granted by the third respondent by non-application of
mind. The impugned registration is contrary to public interest in maintaining the purity of the register. The registration if continues in the register would
cause loss to the applicants. The application for rectification be allowed and the impugned trade mark be removed.
7 . We have heard Shri Sivaraman Vaidyanathan, Counsel for the applicant. The respondents despite service were not present therefore were set ex
parte.
The learned Counsel for the applicants submitted that the impugned application for registration of the trade mark ""Medimol"" under No. 678097 in
Class 5 was filed on 25. 8.1995 as 'proposed to be used'. The applicant's trade mark ""Medomol"" under No. 319599 in Class 5 was adopted in the year
1976 and has been in use continuously without any interruption. The Counsel relied on a sales bill filed as Annexure 'D' in proof of the same. The
Counsel also relied on the sales figures. The Counsel further submitted that the word ""Medomol"" was taken from the company name Medopharm and
it was not from the paracetamol. The Suit was filed after the issuance of the legal notice.
The medicines are for the same ailment. As the marks are deceptively similar there was every possibility of confusion. There is triple identity. The
Counsel relied on Hardies case - 2003 (27) PTC 241 SC in support of his contention that they are aggrieved person. The respondents had no bonafide
intention to use the impugned registered trade mark. The impugned trade mark is wrongly remaining on the register. The registered trade mark is in
contravention of the provisions of the Act. The Counsel finally submitted that the invoices have been created as seen from the dates. The respondents
on the date of application, that is, on 25.8.1995 have stated that they propose to use whereas the invoices are dated May 1995 which is prior to the
proposed to use date. The applicants relied on the Corn Products case - 1962 SC 142 and Pianoist case - 1906 (23) RPC 777 in support of his
argument that marks are to be compared as a whole and side by side comparison shall not be done.
1 0 . We have heard the Counsel for the applicant. We have gone through the pleadings and documents. We have also gone through and considered
the counter statement and documents filed by the respondent.
The applicants are prior user of the trade mark Medomol. The impugned trade mark is Medimol. The applicant's trade mark has been put to use at
least since 1976 whereas the respondents have used the trade mark since 1995. The applicants therefore being aggrieved by the respondent's
deceptively similar mark have issued a legal notice. The applicants have issued a legal notice to the respondents calling upon them to cease and desist
from using the trade mark Medimol. The applicants, the prior user of the trade mark are aggrieved by the impugned trade mark. The application for
rectification is therefore maintainable by the applicants.
The goods fall in Class 5 which are medicinal products. The Apex Court has held that the Registrar has to be more cautious while granting
registration when the goods are medicinal products. In fact the rival marks in this case are almost identical except for the letters 'i' and 'o' in between
the words Med & Mol. The possibility of confusion is certain and not likely. Though the drugs are used for the same ailment we will have to consider
the aspect of prior user. The applicants are prior in use and the applicant's rights are to be protected. We did not have the opportunity of hearing the
respondents but the respondents have filed their counter statement and their documents. The invoices are not clear. We find force in the applicant's
arguments. The applicants state that in August, 1995 the respondents have proposed to use the trade mark, whereas the invoices are dated May, 1995.
When we have held that the marks are similar and the possibility of confusion is certain we do not think that the mark shall continue to remain on the
Register. The application ORA/79/2008/TM/AMD is allowed with a direction to the Registrar of Trade Marks to cancel the Trade Mark No. 678097
in Class 5. No order as to costs.