Raptakos Brett & Co. Ltd. vs Cadila Pharmaceuticals Ltd

S. Usha, J

Application for removal of the trade mark CALCIROL registered under No. 351058 in class 5 under the provisions of the Trade Mark Act, 1999

(hereinafter referred to as the Act). The applicant is the manufacturers and dealer in pharmaceutical drugs, dietic specialities, tonics, injections, syrups,

ointments etc. They have spent large amounts towards advertisements of its products. The applicant is the registered proprietor of the trade mark

CALCINOL under No. 4042 dated 25-08-1942 in class 5. The mark is valid and subsisting as on date. The applicants have sold on a large and

extensive scale the goods bearing the trade mark CALCINOL in India and abroad. By virtue of long, continuous and extensive use, the mark has

acquired tremendous goodwill and reputation amongst the public.

2 . The respondent herein had applied for registration of the trade mark CALCIROL FORTE under No. 801397. The same was advertised in the

Trade Marks Journal on 25-09-2003. The applicants herein had opposed the said registration stating that they are the registered proprietors of the

trade mark CALCINOL and the registration of the trade mark CALCIROL FORTE would cause irreparable injury. The applicants came to know of

the impugned registration from the counter statement filed by the respondent in the opposition proceedings.

The applicants trade mark CALCINOL was well known in the market. The impugned trade mark CALCIROL is identical/similar to the applicants

trade mark CALCINOL. Th grounds of rectification are that:-

(a) the respondents have dishonestly adopted the trade mark;

(b) the impugned trade mark is not an invented word and therefore hit by section 11(1) of the Act;

(c) the impugned trade mark is neither distinctive nor capable of being distinguished;

(d) the registration is in contravention of section 9(2)(a) of the Act;

(e) the likelihood of confusion and deception is certain;

(f) the registration is prohibited under section 11(1)(2)(a) of the Act;

(g) the respondents adoption is dishonest and therefore not registrable under section 18 of the Act;

(h) the entry is wrongly made without sufficient cause;

(i) the marks being similar and used for different ailments is likely to cause irreparable loss; and

(j) the mark deserves to be removed in the interest of public and the trade.

4 . The respondents herein filed their counter statement denying the various allegations and averments made in the grounds of application. The

respondent is engaged in the business of manufacturing and marketing medicinal and pharmaceutical preparations. They are the proprietors of various

trade marks. Their sales turnover runs to crores of rupees annually.

They honestly and bonafidely adopted the trade mark CALCIROL in the year 1979. They are the registered proprietors of the trade mark

CALCIROL as on 06-07-1979. The respondents have incurred huge amounts in promoting and developing their mark and due to excellent quality,

their goods bearing the said trade mark has a good volume of sales. The trade mark CALCIROL is a well known trade mark.

6 . The respondent further states that the CALCINOL and CALCIROL are entirel different -- visually, phonetically and structurally. It is common

practice in pharmaceutical industry to name the drug after their generic terms. There has been no instance of confusion and deception in the market.

The rectification application therefore deserves to be dismissed.

We have head the Learned Counsel for the applicant Shri Dakshesh B. Mehra and the Learned Counsel for the respondent Shri Y.J. Trivedi.

8 . The Learned Counsel for the applicant submitted that they are the registered proprietors of the trade mark CALCIROL as of 1942. The impugned

trade mark is CALCINOL which is a pediatric drug. The applicant company was incorporated as early as 1913. Exhibit 'G' is the price list from the

year 1969. The marks are phonetically similar. The registration is in contravention of sections 9 and 11 of the Act. The Learned Counsel further

submitted that the goods are for different ailments and therefore the mark ought to be rectified.

The Learned Counsel for the applicant relied on the following judgments:-

(a) AIR 1989 Delhi 44 : 1988 (8) PTC 273 (Del) -- Ranbaxy Laboratories Ltd., v. Dua Pharmaceuticals Pvt. Ltd. -- Where the marks were

CALMPROSE v. CALMPOSE -- phonetic similarity amounts to passing off.

(b) AIR 1999 Delhi 15 : 1998 PTC (18) 455 (Del) -- M/s. Charak Pharmaceuticals v. M/s. Deepharma Ltd. -- the marks were ULCEREX v. AL

SAREX -- adoption of ULCEREX by the defendant was similar to the plaintiffs trade mark AL SAREX would amount to infringement.

(c) 2001 (1) GLR Vol. XLII 125 : Â 2000 PTC (20) 412 (Guj) -- Pam Pharmaceuticals v. Richardson Vicks Inc. & Others-the marks were VICAS v.

VICKS.

(d) 2003 (27) PTC 525-- Sanat Products Ltd. v. Glade Drugs & Nutraceuticals Pvt. Ltd. & Anr. -- the marks were REFIRM v. REFORM.

(e) 2004 (28) PTC 391 (IPAB) -- Beecham Group Plc. v. S.R.K. Pharmaceuticals -- the marks were Lymoxyl v. Amoxil.

(f) 2004 (29) PTC 508 (IPAB) -- Societe Des Produits v. V.M. Confectionery Ltd. & Others -- the marks were AERO v. ZERO.

(g) 2007 (34) PTC 151 (IPAB) -- Baroda Pharma Pvt. Ltd. v. Zeneca Limited & Others -- the marks were TENOREX v. TENORMIN.

(h) 2007 (35) PTC 398 (Del.) -- SSG Pharma Pvt. Ltd. v. Amar Nath -- the marks were Satmola v. Sidhmola.

(i) TA/285/2004/TM/AMD -- Cadila Laboratories Ltd. v. Raptakos Brett & Company Ltd. -- the marks were Neoplatin v. Carboplatin.

In reply, the Learned Counsel for the respondent submitted that the impugned trade mark was applied for registration in the year 1979 and was

registered in the year 1984. The rectification application has been filed in 2005 after a long delay. The applicant is not a person aggrieved. The

applicant has not filed any suit or take any action against the respondent. The registered trade mark has not caused any confusion or deception among

the public or trade. The Learned Counsel also relied on few judgments:-

(a) 1999 (19) PTC 718 -- Patel Field Marshal Agencies v. P.M. Diesels Ltd. -- was relied for the argument of delay.

(b) 2011 (46) PTC 185 (Del.) -- United Brothers v. Aziz Ulghani & Anr.

(c) AIR 2008 SC 2737 -- Khoday India Ltd. v. Scotch Whisky Association & Others.

(d) 2010 (0) GLHEL-HC 223073-- Acme Pharmaceuticals v. Torrent Pharmaceuticals Ltd. -- in pharmaceuticals industry it is common to adopt a

name for the drug component.

In rejoinder the applicants submitted that they are the prior adopters and users of the trade mark CALCIROL and therefore the impugned

registered trade mark CALCINOL which is subsequent ought not to continue on the register.

The applicants have based their application for rectification on the ground that they are the prior adopters and users of a deceptively similar trade

mark CALCINOL.

No doubt they have obtained registration of their trade mark as early as 1942 as well produced their price list for the year 1969.

1 3 . The burden to prove the issue of confusion is always on the applicant for rectification in an application for rectification. The applicant herein has

not satisfied as to how they are aggrieved by the mark on the Register.

The issue of confusion or deception has also not been satisfied by the applicants. The impugned trade mark has been on the Register since 1984.

The applicants have not averred non user and therefore it is to be taken that the mark was put to use. If put to use and no proof of confusion then the

applicants cannot be said to be affected by the mark on the register.

The applicants in this case have not proved as to how they are aggrieved by the mark on the register as well have not proved as to confusion in

the market by the mark remaining on the register. We are also of the opinion that the mark has been on the register for nearly three decades which

deserves to continue on the register. Consequently the application is dismissed with no order as to costs.