Tablets (India) Limited vs Ikon Remedies Pvt. Limited

Z.S. Negi, J

The applicant has filed this application for removal of Trade Mark No. 1225874 in class 5, registered in the name of the respondent, from the

register of trade marks or rectification of the register under Section 47/ 57/ 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

It is stated that the applicant carry on an established and reputed business, on all India basis, in manufacture and sale of pharmaceutical and

medicinal preparations for human use. The applicant claims to be using regularly in the course of trading in connection with the above mentioned

goods a distinctive trade mark 'AMBROLITE' since June 1999. The said trade mark is registered under No. 837932 as of 22.1.1999 in class 5 and the

said registration is subsisting and stand renewed for ten years from 22. 1.1999. The applicant claims that its trade mark is registered much earlier than

the impugned trade mark 'AMBROLITE' of the respondent. Apart from the above mentioned trade mark, the applicant claims to be the proprietor of

the trade marks containing or consisting of the word AMBROLITE with varying suffixes, such as, AMBROLITE - ST, AMBROLITE 2S,

AMBROLITE - S, AMBROLITE - XT, AMBROLITE AMBROLITE - 2ST and AMBROLITE - D and applications for registration of thes marks

are pending in the Trade Marks Registry. The applicant is the proprietor of yet another trade mark AMBROLYTE under application No. 733851

under class 5 which has a slight variation in the spelling.

3 . Applicant's claim is that it came to their notice recently that the respondent had obtained registration of an identical mark AMBROLITE under No.

1225874 for various goods including pharmaceutical preparations in class 5 and their subsequent investigations revealed that the said impugned mark

has not been brought into use in the market. Applicant claiming to be the person aggrieved on the grounds of respondent having obtained identical

mark for similar goods and goods of allied nature, has sought removal of the impugned registration from the register of trade marks on various

grounds, inter alia, that the impugned registration obtained by the respondent is identical with the prior used and registered mark of the applicant and

the goods covered by the impugned mark are similar and allied in nature and the use of such mark will certainly cause confusion and deception, not

only to the applicant's detriment but also to the detriment of the trade and public as well; that the impugned mark is not and never is distinctive of the

goods of the respondent; that the respondent is not and never was the proprietor of the impugned mark; that the very adoption of the impugned mark is

dishonest and utterly lacking in any bonafides and ought not to be allowed to continue on the register; that the impugned mark was registered without

sufficient cause and is wrongly remaining on the register; that the use of the impugned mark would result in the goods of the respondent being passed

off as or for the goods of the applicant and would result in the infringement of the applicant's trade mark and that the impugned mark is liable to be

removed on the ground of lack of bonafide intension to use and also of non-user under Section 47 of the Act.

A copy of the application was sent to the respondent on 14.11.2006 calling upon it to file its counter-statement in case it wishes to contest the

application. Though the respondent is in receipt of the application it has not filed any counter-statement. The matter was posted for hearing on

5.2.2009 and hearing notices dated 15.1.2009 were sent to the parties and the said notices have been received by both the parties but the respondent

remained unrepresented on the date of hearing.

5 . When the matter came up before us for hearing on 5.2.2009, the applicant was represented by its authorised representative Mr. P. Maheshwaran,

Vice President-Legal of the company but none appeared for the respondent. Mr. Maheshwaran submitted that the respondent has neither filed the

counter-statement nor any representative is present, the averments made in the application may be taken as confirmed by the respondent and the

application may be allowed. He further submitted that the applicant has been continuously using the mark in respect of the goods for which registration

of mark was obtained and due to continuous and long use the mark has acquired enviable goodwill and reputation. In support of his submission, Mr.

Maheshwaran produced certain copies of random invoices from the years 2000 to January, 2009, duly certified by the Manager-Accounts-of the

applicant and Statement of year wise sales turnover of the applicant pertaining to the years 1999-2000 to 2008-09 (upto December) duly certified by

the Chartered Accountant and, the Vice President-Finance-of the applicant company. It is noticed that in the year 1999-2000, the applicant's turnover

was Rs. 56.40 lakhs which rose to Rs. 124 lakhs in 2007-2008. The turnover up to December 2008-09 is Rs. 97.67 lakhs.

After carefully hearing Mr. Maheshwaran and perusal of the records, we have now to consider whether the applicant is a person aggrieved to file

the present application. Any person may file a notice of opposition but only the person aggrieved may file application for rectification of register or

removal of the mark. Averment is made in the application that the applicant is the person aggrieved, on the grounds of respondent having identical

mark registered for similar goods and goods of allied nature. There is no doubt that the applicant is in the same trade as the respondent who has

registered the identical trade mark and the trade mark of the respondent 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 the applicant could not lawfully do that which, but for the existence of the mark upon the

register, it could lawfully do. In our opinion the applicant is the person aggrieved to initiate the present proceedings. We are fortified in our opinion by

the principle propounded in the Powell's Trade Mark 1894 (11) RPC 4:

 ..although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct and to

exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is a public mischief that

there should remain upon the Register a mark which ought not to be there, and by which many persons maybe affected, who, nevertheless, would not

be willing to enter upon the risk and expense of litigation.

Whenever 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 could 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 locus

standi to be heard as a person ""person aggrieved"".

It is also noticed from the copies of invoices referred to above that the applicant has been, and is, using its trade marks upon the goods such as

AMBROLITE SYRUP, TAB. AMBROLITE, AMBROLITE D SYRUP, AMBROLITE - 2S SYRUP, etc. There is doubt that the applicant is, and

has been, continuously using its trade marks upon or in respect of its manufacture in the course of trade. In deciding the question of deceptive

similarity between the two marks, the true test is whether in totality, the trade marks are such that they are likely to cause confusion or deception or

mistake in the minds of the persons accustomed to the existing trade marks. When compared as a whole the two marks of the applicant and the

respondent, both the marks consist of same alphabets, structurally and phonetically identical and the goods covered by both the marks are

pharmaceutical and medicinal preparations. The trade channel and consumers are also common. Therefore, the use of mark of the respondent in the

course of trade is bound to cause confusion and deception among the trade and public. Further, when the two competing marks are identical and

goods are similar, there is great possibility of passing off of goods and infringement of the trade mark and such registration is barred by Section 11 of

the Act. It is evident from the copy of registration certificate of the applicant and the copy of the respondent's application advertised in the Trade

Marks Journal No. 1327 Suppl. (4), dated 24.1.2005 page 532 that the applicant's registration is as of 22.1.1999 and the respondent's application is of

25.8.2003 (user claimed since 1.4.2003) and thus the applicant is undoubtedly the prior adopter, prior user and prior registered proprietor of the trade

mark AMBROLITE. The fact of prior user is a matter of evidence and such evidence is available by way of the aforesaid copies of certificate of

registration and advertisement in the Trade Marks Journal. It is the settled law that who is first in the market gets the priority. We have already stated

that the two competing marks are identical and the applicant is prior adopter arid user of the mark, so, the respondent's mark cannot distinguish its

goods from that of the applicant's goods and the registration thereof under Section 9 of the Act is barred. Similarly, when the facts and evidence

available on record show that the applicant's mark was in use prior to the adoption and use by the respondent, the adoption of mark identical with the

applicant's mark cannot be said to be honest adoption unless the respondent proves its adoption was bonafide and honest. A trade mark not adopted

bonafidely and honestly, such adopter cannot be said to the proprietor of that trade mark.

For the reasons stated above, we see considerable merit in the application and the same deserves to be allowed. Accordingly, we allow the

application and direct the Registrar of Trade Marks to expunge the trade mark AMBROLITE under No. 1225874 in class 5 from the Register of

Trade Marks. Let a copy of this order be forwarded to the Registrar of Trade marks for compliance. There shall be no order as to costs.