M/s. Kukreja Enterprises, Delhi had filed an application under No.492040 on 1st June, 1988 containing the word “RUPA” (per se) for registration as a Trade Mark in respect of ‘brassieres and panties’ (the specification of goods as amended) in Class 25 claiming through an amended user since 1980. 2. The application was opposed by BINOD HOSIERY, 31, Shibtala Street, Calcutta 700007. The opponents claim that they have been using the trade mark “RUPA” since 1968 in respect of hosiery products including brassieres, panties, vests, under wears etc. The Deputy Registrar also erred in his finding that the appellants/opponent have not discharged the initial onus of proving reputation and goodwill. Not only is this finding erroneous on facts, but is also erroneous on the principles of Law. The Deputy Registrar has completely disregarded the dicta of a Division Bench of the Hon’ble Calcutta High Court in Prem Nath Mayer, Appellant Vs. Registrar of Trade Marks and Another, Respondents (AIR 1972 CALCUTTA 261) wherein it has been held: “As I read the Rules, I see nothing therein to justify the conclusion that the onus shifts from the applicant to the opponent at any stage. On the contrary, the indication in Rule 54 is clear, that the onus lies upon the applicant because that Rule says that even if the opponent does not file any affidavit to adduce evidence in support of the opposition, the applicant has to file within two months from the receipt of copies of the affidavits in support of the opposition, such evidence by way of affidavits, as he desires to adduce in support of his application…………The rules therefore do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings. The onus of proving, that the mark, if registered, will not lead to confusion or deception, is squarely upon the applicant.” (emphasis supplied) 22. Another mitigating factor in favour of the appellant/opponent is that further 27 trade marks bearing the primary word ‘RUPA’ have been registered by them since 1993 every one of which includes ‘brassieres and panties’. This materially alters the situation in favour of the appellant. It also goes to show that the original registration by Kukreja Enterprises, Delhi also in respect of ‘brassieres and panties’ for the same trade mark ‘RUPA’ was improper. 23. The Board had already recorded its displeasure on the conduct of the respondent in these proceedings (see para 6). For the foregoing reasons we refuse the impugned application. Consequently TA/133/2003/TM/DEL is allowed and application No.492040 in Class 25 for the trade mark ‘RUPA’ is refused registration. The respondent is directed to pay a sum of Rs.10,000/- as costs of these proceedings to the appellant.

INTELLECTUAL PROPERTY APPELLATE BOARD

 Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

CIRCUIT SITTING AT DELHI

TA/133/2003/TM/DEL

CM(M) 47/97

TUESDAY, THIS THE 12^th DAY OF JUNE, 2012

Hon’ble Smt. Justice Prabha Sridevan            …    Chairman

Hon’ble Shri V. Ravi                                              …   Technical Member  (Trade Marks)

                                                                                          

Prahalad Rai Agarwala

Ghanshyam Prasad Agarwala

Kunjbehari Agarwala and

Smt. Chhoti Devi Agarwala

trading as BINOD HOSIERY

31, Shibtala Street

Calcutta-700007.                                                                 … Appellant

           (By Advocate:  Shri Neeraj Krishan Kaul, Sr. Advocate

                                                   Dr. Alok M. Saha, Mr. Darpan Wadhwa

                                                   Ms. Jaishree Shukla)

      Vs.

1.  Gopi Chand Kukreja and Anil Kumar Kukreja

     trading as KUKREJA ENTERPRISES

     4425, Gali Bahuji, Pahari Dhiraj,

     Sadar Bazar,

     DELHI-110006.                                                         

2.  The Deputy Registrar of Trade Marks

      Office of the Trade Marks Registry

      Okhla Industrial Estate

      NEW DELHI-110020.                                                     …  Respondents

                                   

                                          (By Advocate:  None)

ORDER(No.163/2012)

Hon’ble Shri V. Ravi, Technical Member:

            In this matter, the respondent M/s. Kukreja Enterprises, Delhi had filed an application under No.492040 on 1st June, 1988 containing the word “RUPA” (per se) for registration as a Trade Mark in respect of ‘brassieres and panties’ (the specification of goods as amended) in Class 25 claiming through an amended user since 1980.

2.         The application was opposed by BINOD HOSIERY, 31, Shibtala Street, Calcutta 700007.  The opponents claim that they have been using the trade mark “RUPA” since 1968 in respect of hosiery products including brassieres, panties, vests, under wears etc.

3.         In due course, on completion of evidence, the matter was heard by the Deputy Registrar of Trade Marks, New Delhi who by his order dated 17.12.1996 dismissed opposition No.DEL 8641 and permitted application No.494020 in Class 25 to proceed to registration.

4.         This order was challenged before the Hon’ble Delhi High Court and subsequently the case was transferred to IPAB.  By Order No.171 dated 25.10.2004, IPAB upheld the findings of the Deputy Registrar and dismissed the appellant’s appeal and allowed the respondent’s application to proceed for registration.

5.         This was challenged by the appellant before the Hon’ble Supreme Court through a Special Leave Petition and by Order dated 18.11.2010, the Apex Court set aside the order of IPAB (Order No.171/2004) dated 25.10.2004 and remanded the matter for consideration afresh. The Supreme Court also granted leave to the appellant to file additional documents/evidence particularly the subsequent registration granted in favour of the appellant for the trade mark “RUPA” and variant thereof.  The Apex Court had observed that additional registrations have been effected in the appellant’s favour for the same trade mark “RUPA” with different sub-title in respect of a variety of goods including ladies brassieres and panties.  These materials were not placed before the IPAB while hearing the appeal against the order of Deputy Registrar.  It is therefore, in the fitness of things that the matter should be considered afresh by the IPAB in the light of subsequent registration of the same trade mark in favour of the appellant in respect of the very same goods.

6.         Accordingly, the matter was listed for hearing on 8.7.2011 and again on 8.9.2011 and once again on 17.10.2011 and then again on 15.12.2011 when on all occasions, the respondents were not present.  The Board had commented adversely on the conduct of the respondents and had ordered that the matter will be heard ex parte at a next date of hearing and if the respondent wants to be heard it will be on payment of Rs.50,000. The matter was again listed on 11.1.2012 and once again the respondent was absent. However, the appellant’s Counsel being unwell had filed Form-5 and sought adjournment. The matter finally came up before us on 29.3.2012 when the matter was heard ex parte.

7.         To get a sense of the protracted litigation between the parties herein, it is necessary to briefly examine/summarise the order of the Deputy Registrar refusing the appellant’s opposition, the findings of IPAB (vide order No.171 of 2004), the additional documents now tendered by the appellant as per Apex Court direction and arguments advanced in support of the appeal petition and in that order.

8.         In his ruling the Deputy Registrar observed that the main dispute between both the parties is whether the term ‘hosiery’ included ‘brassieres and panties’. He also noted that the applicant (respondent herein) had filed five rectification petitions pending in Hon’ble Calcutta High Court in respect of registered TM No.281505, 281506, 339057, 339058 and 339059.  The applicant/respondent had adduced evidence of user since 11.2.1980. He further ruled that the opponents have falsely stated that they were using the trade mark ‘RUPA’ in respect of brassieres, panties and undergarments since 1968.  He held that the applicant/respondent are prior adopter and user of RUPA at least in respect of brassieres and panties. It was only in  Registered TM 487449 filed on 16.3.1988 where for the first time the opponents (appellant herein) sought specific protection inter alia for ‘brassieres and panties’ under the trade mark ‘RUPA Ribline’.  He concluded that the applicant (respondent herein) have been using their mark since 1980 whereas the appellant/opponents started marketing brassiere only from 1988.  He also ruled that the goods covered under the rival marks are different.  He took a stand that the presence of a mark in the register does not prove its user at all.  He commented that the previously registered trade mark of appellant/opponent are in respect of different specification of goods and the user claimed in respect of ‘brassieres and panties’ is subsequent to 1980. He then stated that opponents have not adduced adequate and sufficient evidence of user in respect of all their trade marks whether registered or pending. He further observed that “there has been no complaint from any quarter of public as to whether the impugned trade mark used or applied on ‘brassieres and panties’ causes tangible apprehension of confusion or deception”. He pointedly noted (at page 25) that the applicant’s goods are not used as substitute or alternate to those of the opponents. His conclusion was the opponent having miserably and prima facie failed to establish the grounds of opposition and the application was ordered to proceed to registration giving rise to this appeal.

9.         IPAB (vide Order No.171/2004 dated 25.10.2004) had upheld the order of the Deputy Registrar.  Suitable extracts are reproduced below for easy understanding. The Board has in its ruling commented adversely regarding ante-dating user and substitution of goods and observed -

“….The Deputy Registrar has simply stated that the first respondent is using the impugned mark since 1980 in respect of their goods ‘brassieres and panties’ just on the basis of amendment sought for.  He has totally failed to consider the material available on record in respect of this issue.  Hence the findings of the Deputy Registrar are not on the basis of any available evidence.”

“….Until 1988 the appellant has not claimed use of the trade mark ‘RUPA’ in respect of brassieres and panties.  All the earlier trade marks are pertaining to hosiery including ganjis and jangias.  When the general term hosiery includes different species of goods, persons will be entitled for the benefit of registration only in respect of the goods for which the registration had been obtained.  In that principle till 1988 the appellant is entitled only to the goods ‘ganjis and jangias’…”

“Hence there is no dispute so far as the appellants are concerned that they have been using the trade mark in respect of panties and brassieres only from 1988.  In respect of other goods we are not concerned.  Merely because the appellant obtained the registration in respect of goods hosiery including ganjis and jangias, it cannot be said that the registration is in respect of all the species falling within the general term “hosieries”…”

“In the absence of any evidence in respect of the use of the same trade mark by the appellant or in other words on the failure of the appellant to discharge its burden of proof of their entitlement, we are of the view that the Deputy Registrar has rightly allowed the registration in favour of the first respondent…”

“…Even in respect of the criminal proceedings the learned Magistrate while dealing with the question of sentence clearly stated that mere application for trade mark does not entitle any one to declare that he is the holder of the trade mark.  Hence it is clear that the first respondent seems to have claimed that he is the proprietor of the trade mark as his application was pending.  On the date of the order the appellant was also not the registered proprietor of the said trade mark in respect of the goods under dispute viz. brassieres and panties…”

“…The principle governing the granting of interim injunction of the question of passing off is at times different from the issues under consideration for registration.  In this registration proceedings, we are concerned whether the first respondent is entitled for registration of the impugned mark on the basis of discharge of burden of proof by the appellant in respect of their opposition.  When the appellant failed to discharge the burden of proof in respect of their opposition and having totally failed to prove the use of the mark in respect of the goods, ‘brassieres and panties’ since 1988, or even at any earlier point of time, the first respondent is entitled for registration of the impugned mark. When the appellant claim to be the earlier user, it is for them to establish the same.  When they failed to establish the user, mere registration alone may not be of any use to claim right.  Only on these principles we also agree with the findings of the Deputy Registrar.  For the reasons stated above we dismiss the appeal.  There will be no order as to costs.”

10.       The Hon’ble Supreme Court had directed this Board to examine afresh the appeal in the light of subsequent registration of the same trade mark for the same goods by the appellant/opponent in respect of 27 new trade marks by the appellant/opponent.

11.       We have heard the Counsel for the appellant, perused the records and the citation relied on in support of the appeal and refuse the impugned application of the respondent for reasons indicated herein below.

12.       The case of the appellant/opponent is briefly summarized as follows.  The appellant have been using the trade mark “RUPA” in respect of hosiery goods since 1968. It was argued that the order of the Deputy Registrar was contrary to law and judicial propriety. The respondent’s application under No.492040 in Class 25 was allowed registration in respect of ‘brassieres and panties’ despite the fact that he had been restrained from using the trade mark ‘RUPA’ in respect of these goods by an order of the Hon’ble Additional District Judge, Patna which order has been confirmed by the Appellate Court and further confirmed by the Division Bench of Patna High Court.  The Additional District Judge at Patna vide order dated 29th May, 1993 had held inter alia -

‘The defendants (respondent herein) have been convicted under Section 81 and 88 of the Act and even the Appellate Court directed to release the seized articles on their undertaking that they would not use the word RUPA.’

13.       The Hon’ble Single Judge of the Patna High Court had inter alia held -

‘It is not disputed that the defendants-appellants have got no registered trade mark ‘Rupa’; rather their prayer for registration of such a trade mark ‘Rupa’ has already been refused by the competent authority.  It is also not disputed that for use of such a trade mark ‘Rupa’ by the defendants-appellants who has already been convicted and they further undertook not to use the mark ‘Rupa’ in respect of their hosiery products in future in course of the release of the seized goods.  Ex facie, the trade mark ‘Rupa’ registered for the hosiery goods manufactured by the plaintiff-respondent (appellant/opponent herein) and the mark ‘Rupa’ used by the defendants/appellants (respondent herein) are one and the same.  Therefore, there is no doubt that the trade mark ‘Rupa’ used by the defendants/appellants is deceptively similar and identical and is likely to deceive the general public.  Thus, in view of the aforesaid facts, a prima facie case is made out in favour of the plaintiff-respondents.’

14.       The respondent herein had also applied for registration of the trade mark RUPA in respect of “brassieres and panties” vide an earlier application being Application No.405859 dated May 23, 1983.  The said application was refused registration after a hearing in the matter vide an order of the Hearing Officer dated 5.3.1990.  The Hearing Officer inter alia held:

‘the Applicant’s user of their trade mark cannot be taken to be honest in view of their conviction under Section 81 of the Act, by the Metropolitan Magistrate Delhi, vide his order dated 4.8.1989, hence, they are not entitled for registration under Section 12(3) of the Act.  The application is, therefore, barred by Section 12(1) of the Act, hence, refused.’

15.       The respondents thereafter preferred an appeal to the Hon’ble Delhi High Court which is pending.

16.       It is established law that only those marks should be allowed for registration, where there is no doubt whatsoever that there is no likelihood of confusion or deception.  The Hon’ble Supreme Court in Amritdhara Pharmacy, Appellant Vs. Satya Deo Gupta, Respondent (AIR 1963 SC 449)has laid down the law as under:

‘…the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion.  In cases in which the Tribunal considers that there is doubt as to whether deception is likely, the application should be refused.’

Despite the refusal of the prior application under No.405859 of the respondent,  the Deputy Registrar permitted the respondent to convert the specification of goods of a subsequent application (Application No.492040) from “socks” to “brassieres and panties” neglecting the previous refusal Order and permitted this application to be Advertised Before Acceptance.  Curiously this was done after the Appellants filed their Notice of Opposition to the said application. He first permitted ante-dating date of user from “1st January 1988” to “11.2.1980”, and that too at a time when the entire evidence in the opposition matter had been completed. In effect, when an identical trade mark had been refused registration by one Officer of the Trade Marks Registry, and an appeal in respect of that was pending, this mark was allowed to proceed to registration under the garb of another subsequent application for identical goods and under identical circumstances. This is abuse of process of law.  It must be discouraged.  The Registry should take steps to ensure that the system is proof against such abuse. For example, a database may be created which will show up the history of identical marks. Further, he ought to have considered that the respondent has been giving conflicting dates of user for brassieres and panties. This is established clearly as in the previous application (405859) where the respondent had given the date of user of ‘RUPA’ as “1983”.

17.       The objections of the appellants under Section 11(e) of the Act was wrongly disallowed. Section 11(e) clearly sets out that “A mark which would otherwise be disentitled to protection in a Court, shall not be registered as a trade mark”.  In the facts of the present case, the Hon’ble Division Bench of the Patna High Court has passed an order injuncting the respondent from using the trade mark RUPA in respect of their goods, from which it is clear that the mark of the respondent is disentitled to protection in a Court.  The decision of the Deputy Registrar is therefore contrary to the order of the Hon’ble Patna High Court.

18.       With regard to the objections under Section 12(1), an earlier trade mark of the appellants under No.487449 specifically mentions ‘brassieres and panties’ and predates the application of the respondents. In this application the appellants have specifically claimed user since 1968 of the trade mark RUPA and that too specifically in respect of brassieres and panties. This registration itself bars the application of the respondent under the provisions of Section 12(1) of the Act.

19.       The Deputy Registrar also fell in error in overruling the objections of the Appellant under Section 18(1) of the Act. He has wrongly held that the respondent has proved user of his mark since 1980, and that they are proprietors of the mark as observed by IPAB in the earlier ruling.

20.       Even with regard to the use of RUPA by the appellants in respect of hosiery goods including ganjis and jangias, despite holding that brassieres and panties are sold over the same counter, no reason has been given why there is no likelihood of confusion. This is contrary to numerous decisions of various Hon’ble High Courts, in particular, the decision of a Division Bench of Delhi High Court in the case of Dalip Chand Vs. Escorts Ltd. (AIR 1981 DELHI 150) wherein it was held that even if the goods sold by appellants were different, it would not be taken out of prohibition of Section 11.  It was further held that “if the Court is in any doubt that whether the mark will cause confusion, registration will be refused.”  Likewise, in the case ofJugmug Electric & Radio Co., Apppellant Vs. Telerad Private Ltd., Respondent (1977 IPLR 73), another Division Bench of the Hon’ble High Court it was held that if the rival goods are sold through the same trade channels or through the same shops, then there is likelihood of confusion. Further, the annual Sales figures of the appellants were erroneously rejected. This completely overlooks the fact that the annexures are part and parcel of the affidavit and the appellant has stated on oath that the sales figures and advertisement figures relate to the trade mark RUPA. These sales figures were duly certified by the auditors of the appellant.  Also, the supporting bills filed by the appellants clearly corroborated the fact of extensive use of RUPA by the appellants.

21.       The Deputy Registrar also erred in his finding that the appellants/opponent have not discharged the initial onus of proving reputation and goodwill.  Not only is this finding erroneous on facts, but is also erroneous on the principles of Law. The Deputy Registrar has completely disregarded the dicta of a Division Bench of the Hon’ble Calcutta High Court in Prem Nath Mayer, Appellant Vs. Registrar of Trade Marks and Another, Respondents (AIR 1972 CALCUTTA 261) wherein it has been held:

“As I read the Rules, I see nothing therein to justify the conclusion that the onus shifts from the applicant to the opponent at any stage.  On the contrary, the indication in Rule 54 is clear, that the onus lies upon the applicant because that Rule says that even if the opponent does not file any affidavit to adduce evidence in support of the opposition, the applicant has to file within two months from the receipt of copies of the affidavits in support of the opposition, such evidence by way of affidavits, as he desires to adduce in support of his application…………The rules therefore do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings.  The onus of proving, that the mark, if registered, will not lead to confusion or deception, is squarely upon the applicant.” (emphasis supplied)

22.       Another mitigating factor in favour of the appellant/opponent is that  further 27 trade marks bearing the primary word ‘RUPA’ have been registered by them since 1993 every one of which includes ‘brassieres and panties’.  This materially alters the situation in favour of the appellant.  It also goes to show that the original registration by Kukreja Enterprises, Delhi also in respect of ‘brassieres and panties’ for the same trade mark ‘RUPA’ was improper.

23.       The Board had already recorded its displeasure on the conduct of the respondent in these proceedings (see para 6). For the foregoing reasons we refuse the impugned application. Consequently TA/133/2003/TM/DEL is allowed and application No.492040 in Class 25 for the trade mark ‘RUPA’ is refused registration. The respondent is directed to pay a sum of Rs.10,000/- as costs of these proceedings to the appellant.

(V. Ravi)                                                               (Justice Prabha Sridevan)

Technical Member (Trade Marks)                 Chairman

(This order is being published for present information and should not be taken as a certified copy issued by the Board.)

The request of patent is for “A New Crystalline Form of Adefovir Dipivoxil and its Composition”. Hearing was held on 20.8.2009. The Assistant Controller held that claims 1-4 could not be allowed in view of section 3(d) of the Patents Act, 1970 and no proof has been furnished to show enhanced efficacy. The impugned order also records that there is no data to show clinical trial on human beings to support the case of therapeutical efficacy. Thereafter, the Assistant Controller held that claims 4-7 are not allowable under section 3(e) of the Patents Act, 1970 and claims 7-10 are being beyond the scope of claim 1. It is seen from the paper book that the sentence starting from the word “The experimentation must be done……….” and ending with the words “its effect on man’’’’ has been taken from the extracts taken from the Internet which is a published article in Internet by one David W. TSCHANZ, MSPH, Ph.D. giving historical evidence of the work of earlier Islamic scholars with regard to pharmaceutical knowledge. In the para headed “Ibn Sina and Clinical Trials”, we found this sentence word for word except an addition of a word “monkey”. 5. Next we come to the 2nd para of the impugned order which starts with the word “what is clinical” and ends with “the disease being treated”. We find from the paper book that this is a web printout from Procter & Gamble’s website, where this paragraph is found in the same font and it has been extracted in the impugned order verbatim. 6. Next we come to the 3rd para, which starts with “Five (5) different types classifying trials;”. These are extracted word by word from the Wikipedia under “Clinical Trial” where just above the word-design the words in the paragraphs were extracted except for the photo. Instead of five different types of classifying trials, Wikipedia reads “Another way of classifying trials is by their purpose”. The US National Institute of Health (NIH) organizes trails into Five (5) different types. 7. After linking these three collection of materials from Internet, the impugned order comes to the conclusion that the claims 4-7 are not allowable and claims 7-10 are beyond scope of claim 1. As regards failure to submit clinical data, the learned counsel for the appellant submitted that this had been submitted to them but not considered. 8. This is not how an order shall be passed by the Patent Office. The Controller has the duty to examine the claims and test them for patentability. This order must be set aside. The application is sent back to the Controller who shall consider it independently. On examination and before holding the hearing, the Controller shall examine, if, apart from section 3(d), there are other objections. If so, the Controller shall inform the applicant that other objections shall also be addressed. After hearing the applicant, reasoned order shall be given. 9. The fact that this impugned order has been set aside does not mean that we have considered the merits of the patent application to found the invention patentable. We have not examined the merits at all. This shall be considered independently and in a judicial manner by the Controller. Such an order shall be passed in accordance with law within a period of three months from the receipt of this order. The Appeal is allowed as above and the matter is remanded back to the Controller.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex, Annexe-I, 2^nd Floor, 443, Anna Salai,

Teynampet, Chennai – 600 018

OA/16/2012/PT/DEL

WEDNESDAY THIS, THE 6^th DAY OF JUNE, 2012

Hon’ble Smt. Justice Prabha Sridevan   --  Chairman

Hon’ble Shri D.P.S. Parmar                    --  Technical Member (Patents)

TIANJIN DISHILI INVESTMENT HOLDING

          GROUP LIMITED FORMERLY KNOWN AS  --       Applicant

TIANJIN KINSLY PHARMACEUTICAL CO. LTD.,

NO. 1, LIAOHE DONG ROAD

BEICHEN HI-TECH PARK

BEICHEN DISTRICT

TIANJIN 300402,  CHINA

 (By Advocate Ms. Archana Shanker)

Vs.

1. THE CONTROLLER GENERAL OF PATENTS, DESIGNS

                             TRADE MARKS & GEOGRAPHICAL INDICATIONS

PATENT OFFICE

BOUDHIK SAMPADA BHAWAN

PLOT NO. 32,  SECTOR 14, DWARKA

NEW DELHI – 110 075

2. THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS

PATENT OFFICE

BOUDHIK SAMPADA BHAWAN

PLOT NO. 32,  SECTOR 14, DWARKA                             -- Respondents

NEW DELHI – 110 075

(By Advocate - None)

ORDER (No. 161 of 2012)

HON’BLE SMT. JUSTICE PRABHA SRIDEVAN, CHAIRMAN

          This appeal has been filed against the order refusing to proceed further on the patent application No. 2254/DELNP/2005.  The request of patent is for “A New Crystalline Form of Adefovir Dipivoxil and its Composition”.  Hearing was held on 20.8.2009.  The Assistant Controller held that claims 1-4 could not be allowed in view of section 3(d) of the Patents Act, 1970 and no proof has been furnished to show enhanced efficacy.  The impugned order also records that there is no data to show clinical trial on human beings to support the case of therapeutical efficacy.  Thereafter, the Assistant Controller held that claims 4-7 are not allowable under section 3(e) of the Patents Act, 1970 and claims 7-10 are being beyond the scope of claim 1. 

2.      The learned counsel for the appellant submitted that the entire order is a collection of materials taken out from the information obtained from Internet without any independent application of mind. The learned counsel submitted that in the First Examination Report, the only objection raised was regarding section 3(d) and the appellant was also asked to address the Controller only on the ground of section 3(d) and section 3(i).  The learned counsel also submitted that it is not correct to state that no experimental clinical data was furnished.

3.      The order is a short order and reads as follows:-

“1. The present invention relates to a new crystalline form of a compound and its composition, and in particular, to a new crystalline form of adefovir dipivoxil with the nomenclature of 9- [2-[bis(pivaloyloxy)- methoxy] phosphinyl] methoxy) ethyl] adenine and a composition containing that new crystalline form. The claim 1-4 could not be allowable under section 3(d) of patent act 1970 ,and the agent have not able to prove enhance efficacy. There is no data submitted in the complete specification for clinical trial on human being, "for the support of therapeutical efficacy. "The experimentation must be done with the human body, for testing a drug on a lion or a horse or monkey might not prove anything about its effect on man”””.

2.        What is the clinical trial?

A clinical trial (also called a clinical study) is a medically supervised procedure in which investigational drugs are given to patients for a set period of time while changes in the patients' disease and overall health are monitored through physical examinations and laboratory tests. Typically, during the time patients are taking a drug, they make periodic visits to the doctors in charge of the trial. On these visits, patients usually provide information about how they are feeling, undergo physical examinations, and are given diagnostic tests meant to measure how their condition is responding to the drug. Clinical trials can vary in length from days to years, depending on how long it takes to measure the effect of the investigational drug on the disease being treated.

3.        Five (5) different types classifying trials:

? Prevention trials: look for better ways to prevent disease in people who have never had the disease or to prevent a disease from returning. These approaches may include medicines, vitamins, vaccines, minerals, or lifestyle changes.

? Screening trials: test the best way to detect certain diseases or health conditions.

? Diagnostic trials: conducted to find better tests or procedures for diagnosing a particular disease or condition.

? Treatment trials: test experimental treatments, new combinations of drugs, or new approaches to surgery or radiation therapy.

? Quality of life trials: explore ways to improve comfort and the quality of life for individuals with a chronic illness (a.k.a. Supportive Care trials).

  The applicant failed to submit any experimental clinical data done on human being in support of therapeutic efficacy.

4.        Claims 4-7 are not allowable under section 3(e) of the patent act 1970 as amended in 2005.

5.        Claims 7-10 are beyond the scope of claim 1.

  In view of my findings, I refuse to proceed further on this patent application 2254/delnp/2005.

  Dated 05/10/2009.

 (Saroj Kumar)

Asst. Controller of Patents & Designs.”

4.      It is seen from the paper book that the sentence starting from the word “The experimentation must be done……….” and ending with the words “its effect on man’’’’ has been taken from the extracts taken from the Internet which is a published article in Internet by one David W. TSCHANZ, MSPH, Ph.D. giving historical evidence of the work of earlier Islamic scholars with regard to pharmaceutical knowledge.  In the para headed “Ibn Sina and Clinical Trials”, we found this sentence word for word except an addition of a word “monkey”.

5.      Next we come to the 2^nd para of the impugned order which starts with the word “what is clinical” and ends with “the disease being treated”. We find from the paper book that this is a web printout from Procter & Gamble’s website, where this paragraph is found in the same font and it has been extracted in the impugned order verbatim.

6.      Next we come to the 3^rd para, which starts with “Five (5) different types classifying trials;”.  These are extracted word by word from the Wikipedia under “Clinical Trial” where just above the word-design the words in the paragraphs were extracted except for the photo.  Instead of five different types of classifying trials, Wikipedia reads “Another way of classifying trials is by their purpose”.  The US National Institute of Health (NIH) organizes trails into Five (5) different types.

7.      After linking these three collection of materials from Internet, the impugned order comes to the conclusion that the claims 4-7 are not allowable and claims 7-10 are beyond scope of claim 1.  As regards failure to submit clinical data, the learned counsel for the appellant submitted that this had been submitted to them but not considered.

8.      This is not how an order shall be passed by the Patent Office.  The Controller has the duty to examine the claims and test them for patentability. This order must be set aside.  The application is sent back to the Controller who shall consider it independently. On examination and before holding the hearing, the Controller shall examine, if, apart from section 3(d), there are other objections.  If so, the Controller shall inform the applicant that other objections shall also be addressed.  After hearing the applicant, reasoned order shall be given.

9.      The fact that this impugned order has been set aside does not mean that we have considered the merits of the patent application to found the invention patentable. We have not examined the merits at all.  This shall be considered independently and in a judicial manner by the Controller.  Such an order shall be passed in accordance with law within a period of three months from the receipt of this order.  The Appeal is allowed as above and the matter is remanded back to the Controller.

(D.P.S. PARMAR)                              (JUSTICE PRABHA SRIDEVAN)

TECHNICAL MEMBER                      CHAIRMAN

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

The trade mark “AMERICAN GEM SOCIETY LABORATORIES” and “SETTING THE HIGHEST STANDARD FOR DIAMOND TRADING” is highly descriptive to their services and directly refer to character or quality of the services. No evidence for honest adoption and honest use of the trade mark has been filed as the trade mark is proposed to be used on the date of application. No evidence is filed to prove the acquired distinctiveness. Neither of these two marks “AMERICAN GEM SOCIETY LABORATORIES” nor “SETTING THE HIGHEST GRADE FOR DIAMOND GRADING” is lexical invention nor syntactically unusually juxtaposed. Thus in our considered view both the impugned trade marks are totally devoid of any distinctive character. 6. We therefore uphold the order of refusal of application No.1365886 and 1365887 both in Class 42 by the Deputy Registrar.of Trade Marks. The appeals OA/97/2008/TM/DEL and OA/98/2008/TM/DEL are consequently dismissed.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

CIRCUIT SITTING AT DELHI

OA/97/2008/TM/DEL

AND

OA/98/2008/TM/DEL

FRIDAY, THIS THE 8^th DAY OF JUNE, 2012

Hon’ble Smt. Justice Prabha Sridevan                    …    Chairman

Hon’ble Shri V. Ravi                                                       …   Technical Member (Trade Marks)

      

                                                                                             

American Gem Society Laboratories LLC

8917, West Sahara Avenue,

LAS VEGAS,

NEVADA, 89117, United States of America.                            …   Appellant

(By Advocate:  Shri Tarvinder Singh & Shri Anshuman Sharma)

Vs.

The Deputy Registrar of Trade Marks

Trade Marks Registry

Intellectual Property Bhawan

Plot No.32, Sector-14, Dwarka,

New Delhi-110075.                                                                 … Respondent

                                   

                                                                       

          (By Advocate:  None)

   ORDER(No.160/2012)

Hon’ble Shri V. Ravi, Technical Member:

            On 22^nd July, 2008 the Deputy Registrar of Trade Marks refused two applications filed by American Gem Society Laboratories LLC giving rise to these appeals. The language used explaining the grounds of refusal is identical/similar.  The appeals were also listed before us on the same day.  We have heard the submissions of Counsel one after the other.  Since the grounds of appeal and decision are similar we are disposing of these two appeals through a common order. The trade marks refused are detailed as under:

(i)                  “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” under No.1365886 in Class 42.

(ii)               The second application was “AMERICAN GEM SOCIETY LABORATORIES” filed by the above mentioned firm with the same name in respect of Gemological services, namely, grading precious stones under No.1365887 also in Class 42.

Both the marks were ‘proposed to be used’. The Appellant is a premier diamond grading laboratory for cut diamond and provide complete grading analysis of colour, clarity and carat weight. The appellant are in this business since 1996 and claim to be the industry leader for diamond grading.  The appellant are also the registered proprietor of the impugned trade mark in US, Japan, Canada, UAE, Benelux and several other countries.  In India the application was made in June, 2005.  It was duly examined and the Examination Report raised objection under Section  9(1)(b) of the Trade Marks Act, 1999 (in short ‘Act’) on ground of geographical significance and also on relative grounds. The appellant submitted a detailed response to the Examination Report contesting both the objections. As the registry refused to waive the objections, a Show Cause hearing was appointed. Surprisingly, it refixed the matter for hearing thrice over and finally by an order dated 22^nd July, 2008, both the impugned applications were refused under Section 9(1)(b) of the Act on the ground that the subject mark was not capable of distinguishing the goods or services of one person from another.  The operative part of the order of refusal reads as follows:

‘The trade mark “AMERICAN GEM SOCIETY LABORATORIES” and “SETTING THE HIGHEST STANDARD FOR DIAMOND TRADING” is highly descriptive to their services and directly refer to character or quality of the services.  No evidence for honest adoption and honest use of the trade mark has been filed as the trade mark is proposed to be used on the date of application.  No evidence is filed to prove the acquired distinctiveness.

            After going through the records available before this Tribunal and after hearing the arguments/submissions of the learned Advocate, I have come to the conclusion that trade mark application is open to objection under Section 9 of the Trade Marks Act, 1999 and liable to be refused.’

2.         Being aggrieved by this decision, the appellant have preferred an appeal before this Board. The grounds of appeal are briefly summarized as follows:

(a)       The Deputy Registrar has failed to state in writing the ground of refusal and the material used by him while refusing the impugned application.

(b)       It is not enough merely to cite one Section of the Act and refuse an application.

(c)        The Deputy Registrar has not taken cognizance of the TM-16 filed by appellant on 03.01.2006 for amending the legal status of the appellant firm to American Gems Societies Laboratories, LLC.

(d)       The Deputy Registrar in his impugned order has stated that “No evidence for honest adoption and honest use had been filed as the trade mark is proposed to be used on the date of application.”  This objection was never raised either in the Examination Report or even at the time of hearing. The impugned mark is the corporate identity of the appellant since 1996 and just because it is proposed to be used in India, the inference that it is lacking ‘honest adoption and use’ is erroneous and bad in law.

(e)       It was submitted in response to the Examination Report and also during the hearing that the trade marks “AMERICAN GEM SOCIETY LABORATORIES” and “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” has been used since 1996 through print and electronic media and evidence of a few advertisement materials were also furnished that was totally disregarded.  The order of the Deputy Registrar is therefore bad in law and should therefore be set aside.

3.         The Deputy Registrar had come to the conclusion that the impugned marks “American Gem Society Laboratories” and “Setting the highest standard for diamond grading” are liable to be refused registration.  However, where he has erred is not providing a detailed speaking order justifying his decision which has resulted in this appeal.  We uphold both the orders of the Deputy Registrar for the following reasons:

(i)         The mark under No.1365887 has reference to the geographical origin of the services.  It has also reference to the goods (gems) in respect of which it renders services relating thereto. The reference to “American” when applied to “gemological” services will only serve to indicate such services that are being rendered at the particular place namely, “America”. Prima facie, the impugned mark is not capable of serving the purpose of a trade mark which is to indicate trade source of goods/services in India.  Section 9(1)(b) of the Act is an absolute bar for registration of a trade mark which indicate a geographical origin. The prohibition in the case of geographical name is not confined to the noun substantive but extends to the adjectival form too.  Thus the use of the expression “American” in the impugned mark is prohibited by law.  Here the mark is not a fanciful suggestion of association with a geographical location like “Evening in Paris’.  The geographical name ‘American’ in its primary and obvious meaning would designate the place where its goods are produced or services rendered and its registration in Indiawould be deceptive.  Hence there is no question of its registration as a trade mark in India as a proposed mark. 

(ii)        Similarly, the second mark “SETTING THE HIGHEST STANDARDS FOR DIAMOND GRADING” is totally descriptive of the services it renders and has no source origin capabilities and is incapable of distinguishing goods or services of one undertaking from others. The test is to co-join the mark to the services and consider what the word would mean to the average purchaser concerned with such services. In this case there is an instantaneous perception of descriptiveness. There is no doubt in our mind of the impugned mark being laudatory and it cannot be allowed to be monopolized.

(iii)       Secondly, both the impugned marks are “proposed to be used” in India. As a proposed mark “AMERICAN GEM SOCIETY LABORATORIES” does not qualify for registration as it is not capable of distinguishing the goods/services from other and does not establish origin function and cannot be a source indicator. The fact that the impugned mark is used outside in India (since 1996) does not add any weight to the applicant’s case. The intent of the law is if a mark fails to pass the threshold test of ‘capable of distinguish’, its use over time may enable it to do so but with the rider that such use should be in the Indian market. That not being the case here, the application is not able to meet the primary objection raised in the Examination Report.

(iv)       Similarly, in our view the trade mark “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” is totally descriptive and laudatory. It tells potential customers, whether retailers or end users, that the services rendered by it will help them make profits.  The legal principle is honest traders should not need to consult the register to ensure that common descriptive or laudatory terms have been monopolized.

4.         The next ground relied on was both the impugned marks have been registered in a number of other countries.  It is well settled that the trade marks law is territorial in nature and registration of a mark in any number of countries (including US) will have no bearing on its registration in Indiaunder our law.

5.         The appellant had drawn our attention that the Registry has in the past in several instances accepted and published slogans/taglines as detailed below:

(a)               Smile tonic for Indian Roads

(b)               Life can be so delicious

(c)               Serious food served with fun

(d)               Making money or just chips(for computer software)

(e)               Everyone has a reason to pray (for Agarbathis)

(f)                 Make your prayer truly divine(for Incence stick)

(g)               Whenever you need us, we are close to you (for consultation services relating to engineering).

Many other examples have been given.  In our view, each case has to be decided on its own fact. It is not possible to state in general terms what it is that gives any particular mark its distinctive character. In our judgment both the impugned marks serve in normal usage from the consumer’s point of view to designate, either directly or by reference to one of their essential component/ingredients, the services such as those in respect of which registration is sought.  Neither of these two marks “AMERICAN GEM SOCIETY LABORATORIES” nor “SETTING THE HIGHEST GRADE FOR DIAMOND GRADING” is lexical invention nor syntactically unusually juxtaposed. Thus in our considered view both the impugned trade marks are totally devoid of any distinctive character.

6.         We therefore uphold the order of refusal of application No.1365886 and 1365887 both in Class 42 by the Deputy Registrar.of Trade Marks. The appeals OA/97/2008/TM/DEL and OA/98/2008/TM/DEL are consequently dismissed.

(V. Ravi)                                                                       (Justice Prabha Sridevan)

Technical Member (Trade Marks)                            Chairman

(This order is being published for present information and should not be taken as a certified copy issued by the Board.)