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Judgment
Prabha Sridevan, J
1 . This is an appeal against the order dated 11.06.1993. The opposition to the application for registration of the mark MULTIPLEX was disallowed.
Therefore, the opponent has filed this appeal. The respondent is not before us. We have heard the learned counsel for the appellant at length and we
proceed to deal with the matter on merits. The respondent have applied for the word mark MULTIPLEX under application No. 402594 in Class 5,
2 . The application is dated 11.03.1983, the user is claimed from 20.06.1974 and it was advertised before acceptance on 16.11.1989. The appellant
filed his notice of opposition on 14.03.1990. They were registered proprietors of the mark MULTIVITAPLEX under No. 132850 in class 5 dated
12.03.1948 and another trade mark MULTIVITAPLEX forte under No. 286129. According to the appellant both marks are deceptively similar and
bound to cause confusion, the adoption was dishonest. There was a notice in 1982 and talks of settlement were on and despite that the respondent had
malafide applied for registration. The respondent denied the averments and contended that their goods had been in the market openly and continuously
since 20.06.1974.
3 . The learned Assistant Registrar considered the user from 1974 and accepted the evidence with regard to the same and the Registrar observed that
it would not be corrected and held that the appellant had acquiesced in the respondents use of the mark, the objection was only in mere words. The
Registrar was of the opinion that the continuous use of the mark from 1974 would constitute circumstances under Section 12(3) for grant of
registration. There was however, lack of clarity with regard to the constitution of the respondent/applicant. It was not clear whether the respondent
was a partnership or a proprietary concern and therefore the learned registrar made it clear that only after the respondents bring on record the
necessary change in their constitution within 30 days thereafter, the mark shall go on Register
The learned counsel appearing for the appellants submitted that the constitution of the respondents itself was in doubt. There is a possibility of
another party claiming to be a partner may come up with the same mark and the appellant ought to be protected from other persons diluting the mark.
Learned counsel submitted that when there is a finding of deceptive similarity, registration ought not to have been granted. Since the adoption is not
free from doubt, the subsequent use cannot be relied on to grant registration.
5 . The learned counsel submitted that the appellant had in fact suggested three alternatives in place of the impugned mark and the appellant genuinely
believed that the respondent would adopt an alternate mark which is why the appellant had not resorted to legal action earlier. The learned counsel
submitted that the Board shall not treat this fact of not filing a suit to stop the respondent from using the mark as a circumstance against the appellant
and should appreciate the circumstances under which the appellant waited for the respondent to change the mark. It is only when they found that
while on the one side, the respondents were talking for settlement, on the other side they had applied for registration that they realized that they to
oppose the registration.
The records from Trade Marks Registry are before us. We find that the respondent had produced documents to show user of the mark
MULTIPLEX in connection with the goods right from 1974. There is no challenge to this evidence. In the affidavit in support of the application, the
respondent had explained that since the preparation was MULTIVITAMIN and 'B Complex' they had coined the word MULTIPLEX. There wa
neither dishonesty nor was there deceptively similarity. According to the respondent MULTIPLEX and MULTIVITAPLEX were sufficiently
different to rule out confusion.
As we have observed earlier, the respondent has been using the mark 1974. The appellant company is a big company and also in the same
Pharmaceutical industry. The evidence shows that the respondents have been widely marketing their product. And yet apart from issue of notice, the
appellant had not taken any step to restrain or stop the respondent from marketing the goods under the name MULTIPLEX. We really think that the
hardship caused to the respondent would be huge especially since there is no evidence that in fact the respondent mark had caused confusion amongst
to public. The conclusion of the Learned Assistant Registrar appears to be correct. He had also ensured that the constitution of the respondent would
be recorded and it is only there after the mark would go on register. If any other third party makes a claim to the same mark, the order passed in this
cannot affect the rights of the appellant to challenge that claim. The appeal is dismissed.