Pavitar Singh, Amarjit Kaur And Harvinder Kaur, Trading As Carevet Pharma vs Gopal Shankar Prasad, Trading As Curevet Pharmaceuticals

S. Usha, J

1 . This is an application for removal of the trade mark VETLIV FORTE under No 1268374 in class 31 under the provisions of Section 47, 57 and 125

of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The applicant is a partnership firm carrying on business of manufacturing and

selling of veterinary preparations (feed supplements for animals) since the year 0.1.04.1989 under the trade mark VETLIV. The applicants are

registered proprietors of the trade mark VETLIV under No. 810169 in class 5 in respect of veterinary preparations. The said registration is valid and

subsisting as on date. The applicants have promoted the trade mark and have built up reputation and goodwill in the market. They have advertised

through various medias and as such have acquired unenviable reputation and good will among the public.

2 . The Respondents have adopted the trade mark VETLIV FORTE which is identical/similar to the registered trade mark of the applicants and also

in respect of the same goods. It is likely to cause confusion and deception in the market. The adoption of an identical trade mark by the Respondent is

neither honest nor bonafide as the Respondents have copied the applicant's well-known trade mark. The Respondents filed a Civil Suit against the

applicants for infringement of the trade mark and as such the applicants are persons aggrieved within the meaning of the Act.

The Respondents have not only infringed the registered trade mark but have also infringed the artistic work of the applicants. The adoption of an

identical trade mark will lead to confusion and deception among the public. The impugned trade mark is devoid of any distinctive character and is

therefore in contravention of the provisions of Section 9 of the Act. The Respondents have also not used the trade mark for a period of more than five

years and three months and on this ground alone, the trade mark has got to be removed from the Register. The registration granted is made without

sufficient cause and is wrongly remaining on the Register.

The Respondent filed their counter-statement denying the averments made in the grounds of the application for rectification. The Respondents

stated that they have been carrying on business of manufacturing and trading of animal feed supplements since 01.11.2002. They had been carrying

business all over India as a sole- proprietorship firm. They adopted the trade mark VETLIV FORTE since 01.11.2002. The impugned application for

registration was made on 23.02.2004 claiming user since 01.11.2002. The Respondents when became aware of the applicants trade mark and when

they came across the sale of the goods bearing the trade mark VETLIV had initiated a Civil Suit before the district court and the Hon'ble court was

pleased to grant an order of injunction restraining the applicants from using the trade mark VETLIV and the same is continuing as on date.

The applicant's user since 01.04.1989 is denied. In fact the Respondents are prior adopter, user of the trade mark VETLIV FORTE for veterinary

feed supplements for live-stock and poultry which falls under class 31 whereas the applicants are for veterinary preparations. The averments that the

Respondents have obtained registration by falsely mentioning the wrong class is totally denied. The applicants have also suppressed the fact they are

restrained by an order of injunction which subsists as on date before this Hon'ble Board.

The Respondents also stated that the goods are totally different and the products are different and the class is also different. As such the balance of

convenience is in favour of the Respondent and against the applicant and the application for rectification deserves to be dismissed in limini.

We have heard the arguments of Shri Prashant R. Trivedi, learned Counsel for the applicant and Shri U.B. Brahmbhatt, learned Counsel for the

Respondent at the Circuit Bench Sitting at Ahmedabad on 24.11.2010.

8 . The learned Counsel for the applicant submitted that they are prior users of the trade mark ""VETLIV"" since 01.04.1989. They are the registered

proprietors of the trade mark under No. 810169B as of 14.07.1998. The Respondent's trade mark VETLIV FORTE which is similar/identical to the

applicants trade mark is used since the year 2002 which is subsequent to that of the applicants. The Respondents have not only copied the trade mark

of the applicants but also the trading style has been copied. The counsel brought to our notice the legal notice dated 12.09.2007 issued by the

Respondents filed along with the counter-statement wherein it was admitted by the Respondent that the rival marks VETLIV and VETLIV FORTE

are deceptivel similar and was likely to cause confusion and deception and the adoption is malafide with a view to encash on the goodwill earned by

the Respondents. In reply the applicant had sent a letter dated 29.09.2007 in which the applicant had requested for the particulars of the registration

and wished to advice his clients for settlement. The applicants received no reply. The applicant also stated that the Respondents had mentioned the

class differently as 31 instead of class 5 knowing well they will not be able to obtain registration in class 5 as already a conflicting mark was on the

Register.

9 . The learned Counsel for the Respondent submitted that they had furnished a certificate issued by the Chartered Accountant to prove their sales

turnover since the date of adoption. So the Respondent had developed their business and their trade mark had gained good reputation and goodwill in

the trade and public. The trade mark, therefore, has to continue on the Register.

The leaned counsel for the applicant in rejoinder submitted that the Respondent has given no answer for the submission that no reply was given for

the legal notice issued.

11 . We have heard and considered the arguments of both the counsel and have perused the pleadings and documents.

The expression Person Aggrieved has been liberally construed by various courts and it includes a person who has obtained registration used that

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.

It also includes persons who are in some way or the other substantially interested in having the mark removed and includes persons who are

substantially damaged or prejudiced if the mark is allowed to continue on the Register.

1 3 . The best definition of the expression ""person aggrieved is given by Lord Herschell in Powells TM Case - (1894 (8) AC at page 10) -

Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the Trade Mark and wherever the trade

mark, if remaining on the Register, would or might limit the legal rights of the applicant so that by reason of the existence of the entry on the Register

he would not lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me, he has a locus stand to

be heard as a person aggrieved.

Based on the observations made in the Powell's TM Case, we are of the opinion that the applicant being a prior adopter and user of the trade

mark is a person aggrieved. That apart, the applicants have stated that a Civil Suit was filed by the Respondents and therefore, they are persons

aggrieved. No evidence was placed before us to substantiate their statement. But the Respondents have annexed the copy of the legal notice issued to

the applicant to cease and desist from using the trade mark VETLIV. Therefore, there has been a legal threat issued to the applicant and is to be

construed as a person aggrieved. The applicant has locus stand to file and maintain an application for rectification.

The next ground would be that if the mark is allowed to remain on the Register, would cause any confusion or deception in the public and trade.

The rival marks are similar and the goods are identical. This fact has been admitted by the Respondent in their cease and desist notice issued to the

applicant. The burden of proving the issue of confusion is always on the applicant for rectification and thereafter, the onus shifts on to the Respondent.

Hence, it is an admitted fact that the marks are causing confusion in the public, by the Respondent. It is worth mentioning the averments made at

paras 4 & 5 of the cease and desist notice dated 12.09.2007 -

Recently, it has been brought to my clients notice that you have adopted an identical and/or deceptively similar trademark VETLIV FORTE in

respect of Veterinary Feed Supplements. Further more you have adopted and are using similar trade mark for identical goods i.e. Veterinary Feed

Supplements. Thus, you have totally imitated my clients' trade mark VETLIV FORTE with malafide intention to gain benefit in the market and to

encash my clients goodwill and reputation in your favour and further with a view to pass off your goods as and for the goods of my clients and thereby

to cause deception and confusion in the market. Thus, you have passed off my clients' rights.

5 . My clients say that the deceptive similarity between the two words leave one in no doubt that you have totally copied my clients trademark

VETLIV FORTE. My clients further say that the adoption and use of identical trade mark by you is obviously with dishonest intention to cause

confusion and deception in the trade and thereby make illegal benefits by passing off your goods as and for the goods of my clients. You have, invaded

the invaluable goodwill and reputation of my clients' said trademark VETLIV FORTE. My clients are enjoying tremendous reputation for their

trademark. VETLIV FORTE. My clients further state that your goods under the impugned trademark and my clients goods bearing the trade mark

VETLIV FORTE are available through the same trade channels or at the same shop i.e. Chemists. My clients are in the market with the well-known

trademark VETLIV FORTE since long and have acquired valuable goodwill and reputation.

The Respondents have admitted that it is causing confusion in the public as the marks are deceptively similar. The mark, therefore, is in

contravention of provisions of Section 11 of the Act.

The applicants have used the mark since 1988 whereas the Respondents have adopted a deceptively similar mark rather an identical mark except

for the additional word FORTE only in the year 2002 which is subsequent adoption has not given any valid reason for the adoption of the trade mark

similar to that of the applicant. Therefore, the Respondents' adoption is tainted with dishonesty. The registration is against the provisions of Section

18(1) of the Act.

The Respondent though has disputed the date of user, has not commented upon the applicant's registration as to its validity. The settled principle of

law is that the prior user is to be protected. In view of this the applicant's rights are to be protected and therefore the Respondents mark shall be

removed from the Register of Trade Marks.

In the above circumstances, the original rectification application is allowed. The Registrar of trade Marks is directed to remove/cancel the trade

mark registered under No. 1268374 in class 31. The parties shall bear their own costs.