As regards the invoices, the L.S.T. No. which is subsequent to the date of the invoice cannot be accepted to be a valid document to consider the use. The other issue is that the licence has been granted for the mark “TARGET”. We also see some of the invoices bear the trade mark TARGET. Assuming the respondents to have adopted both the trade marks – TARGET and TARJET, but the licence is granted only for TARGET and not TARJET. The use of the trade mark “TARJET” could be only to trade upon the goodwill of the appellants. The adoption cannot therefore be said to be bonafide. 19. The appellants have been using the trade mark since the year 1984 whereas the respondents adopted the trade mark only since 2001. The rights of the earlier user ought to be protected. 20. For the reasons stated above, the appeal OA/39/2009/TM/AMD is allowed and the impugned order is set aside. There shall be no order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD

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

(CIRCUIT SITTING AT AHMEDABAD)

OA/39/2009/TM/AMD

 MONDAY, THIS THE 25^th DAY OF JUNE, 2012

Hon’ble Ms.S. Usha                                                       …  Vice Chairman

Hon’ble Shri V. Ravi                                                      …  Technical Member

              

                                                                                     

M/s. Godrej Sara Lee Ltd.

Pirojshnagar, Eastern Express Highway,

Vikhroli,

Mumbai

MAHARASHTRA.                                                              … Appellant

(By Advocate:  Shri M.R. Nair)

Vs

1.         M/s. GSP Crop Science Pvt. Ltd.

404, Lalita Complex,

352/3, Rasala Road,

Navrangpura,

Ahmedabad,

GUJARAT.                                                             … Respondent No.1

2.         The Deputy Registrar of Trade Marks

            15/27, National Chambers

Ashram Road,

Ahmedabad-380009.                                         … Respondent No.2

                                   

                                              

  (By Advocate:  Shri Akshay Vakil)

ORDER (No.171/2012)

Hon’ble Ms.S. Usha, Vice-Chairman:

            Appeal arising out of the order dated 19.02.2009 passed by the Deputy Registrar of Trade Marks disallowing the opposition No.AMD-193048 and allowing application No.1249080 in Class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’).

2.         The 1^st respondent herein filed an application for registration of the trade mark TARJET (a label mark) in Class 5 under No.1249080 on 12.11.2003 claiming user since 8.1.2001. The said application was advertised before acceptance in the Trade Marks Journal No.1323 dated 6.12.2004 at page 466 which was made available to the public on 7.3.2005. The appellants herein opposed the registration stating that their trade mark “JET” has become very popular among consumers and trade by virtue of long and continuous use. The respondent’s adoption is dishonest and it is calculated to pass off their goods as that of the appellants/opponents.

3.         The 1^st respondent filed their counter statement stating that they adopted and used the trade mark “TARJET” since 2001 in respect of pesticides, insecticides, disinfectants which are related to agriculture. They adopted the trade mark after conducting a market survey. The marks are different and also the goods.

4.         The learned Registrar held that the mark “TARJET” has no direct reference to the character and quality of goods and therefore does not fall within the ambit of Section 9 of the Act.  The appellant’s trade mark is “JET” and the respondent’s trade mark is “TARJET”. The respondent has coined the mark “TARJET” by adopting the different words. The class of customers and the goods are different hence rejected the objection under Section 11 of the Act.  The registration was granted under Section 12 of the Act as the respondents had proved bonafide concurrent use.

5.         The respondent before adopting the impugned trade mark conducted a market survey. The mark is coined and is not similar with the trade mark “JET”. The goods are different. The objection under Section 18 of the Act was therefore rejected. The opposition was therefore dismissed and the application was allowed to proceed to registration.

6.         Aggrieved by the said order, the appellant filed the instant appeal on the ground that they are engaged in the business of manufacturing and marketing of variety of goods including mosquito repellants in the form of mats, coils and liquids. The appellant is one of the largest manufacturers of mosquito repellants in India. The appellants JET brand is very popular amongst the customers and in the trade. The appellant is the registered proprietor of the trade mark JET.

7.         The appellant filed the appeal on the ground that the registration of the impugned trade mark would cause confusion among the consuming public. The Registrar wrongly held that the trade mark JET and TARJET are phonetically different. The Registrar erroneously held that the trade mark TARJET has no direct reference to the goods. The appellant’s mark is for household goods whereas the respondent’s mark is for agricultural products. The decisions were not considered by the Registrar. The Registrar failed to consider the fact that the appellants were prior in adoption and use.

8.         The respondent filed their counter statement stating that they honestly coined and bonafidely adopted the trade mark TARJET since 1.8.2001. After a market survey the respondents adopted the trade mark as there was no deceptively similar trade mark available in the market.  The respondent’s trade mark is distinctive and capable of being distinguished. Their trade mark has acquired very high reputation and goodwill in the market. They have spent huge amounts to advertise and popularize their goods bearing the said trade mark. Their sale turnover runs to several crores of rupees. The registration would not be in contravention of the provisions of the Act.

9.         We have heard Shri M.R. Nair, Counsel for the appellant and Shri Akshay Vakil, Counsel for the respondent on 9.4.2012.

10.       The learned Counsel for the appellant submitted that the appellant’s mark is “JET” and the respondent’s mark is “TARJET”. The appellants have been using the trade mark JET since 1984 whereas the respondents have adopted and used the trade mark TARJET since 2001 only to trade upon the appellant’s use and goodwill. The respondent has no reason for adopting the trade mark “TARJET”.  The reason given for JET is that it is a dictionary word which means spray but no explanation for the word TAR.

11.       The respondents though state that they made a market survey, no evidence has been produced before the Registrar. In fact the Registrar has considered and observed in the impugned order that a market survey was conducted but the respondent has not produced any evidence. There is no evidence to prove their statement of search conducted in the Trade Marks Registry.  The adoption is dishonest and therefore is not the proprietor of the trade mark.

12.       The Counsel then relied on an unreported judgment of the Bombay High Court in Miscellaneous Petition No.3 of 1992 – Marion Merrell Dow Inc., Petitioners Vs. Unichem Laboratories Ltd., T.R. Subramanian, R. Ravi, Respondents and submitted that if a person had copied somebody else’s mark cannot be said to be the proprietor of the trade mark, then even if it is a coined or invented word the applicants cannot seek registration under Section 18 of the Act. The Counsel pointed out to the invoices and submitted that the invoice is dated 8.8.2003 whereas the L.S.T. number is dated 20.9.2003 which only creates a doubt as to its veracity.  The application for change of company name was made on 1.9.2003 but the invoice dated 8.8.2003 is in the name of the changed name which is again not a valid evidence.

13.       The Counsel then relied on few judgments, namely -

(i)         1982 PTC 321 – Sharda Machinery Corporation, Delhi – Appellants Vs. R.S. Sewing Machine Co., Bassi Pathanan, Respondents

(ii)        1887 RPC Vo.IV.No.8  decided by Courts of Law in the United Kingdom, Chancery Division – The Sanitas Company, Plaintiff Vs. Condy, Defendant

(iii)             1980 RPC (9) 237 – In the Trade Marks Registry - DA VINCI Trade Mark

(iv)              1937 RPC Vol.LIV (7) – Chancery Division – Macleans Ld., Vs. J.W. Lightbown and Sons, Ld., and in the matter of a Trade Mark “MAC” No.458,654

(v)                1997 PTC (17) – Induss Food Products Equipments Ltd., Petitioner Vs. Rani Sati Ice-cream Pvt. Ltd., Respondents

(vi)              1996 PTC (16) – American Home Products Corpn., Wyeth Lab. Ltd., Petitioner Vs. Lupin Lab Ltd., Respondents

(vii)            2012 (49) PTC 330 (Del.) – Piruz Khambatta & anr., Plaintiffs Vs. Soex India Pvt. Ltd. & Ors., Defendants

14.       In reply, the Counsel for the respondent submitted that the goods are different, the trade channels are different and the quantity also differs, so the possibility of confusion does not arise. The Counsel then submitted that the marks are to be compared as a whole and relied on the judgment reported in 1982 (2) PTC 335 (SC) – F. Hoffimann La Roche and Co. Ltd., Appellants Vs. Geoffry Manners and Co. Pvt. Ltd., Respondents. The Counsel further submitted that the mark is not descriptive and therefore Section 9 of the Act is not applicable. The Counsel finally submitted that the impugned order was correct and prayed that the appeal be dismissed and the application be allowed to proceed to registration.

15.       We have considered the arguments of both the Counsel and have gone through the pleadings and documents.

16.       The respondent’s main contention was that the trade mark was a coined word and there was no similarity between the rival marks.  The respondents are stated to have coined the trade mark by joining the words, that is, “TAR” and “JET”.  The meaning for “JET” is to spray but no answer for “TAR”.  If we are to take the word “JET” to mean to spray then it is said to be descriptive of the goods. The goods are pesticides, insecticides etc.  When there is no clear explanation to say it is a coined or invented word then it cannot be said to be an invented word.  If it is not an invented word then the applicant/respondent herein cannot be said to be the proprietor of the mark.

17.       The burden of proving confusion is always upon the applicant for registration in an opposition proceedings. The applicant, that is, the respondent herein is to satisfy that the registration of the impugned trade mark will not cause any confusion. The applicant has not satisfied the same.

18.       As regards the invoices, the L.S.T. No. which is subsequent to the date of the invoice cannot be accepted to be a valid document to consider the use. The other issue is that the licence has been granted for the mark “TARGET”. We also see some of the invoices bear the trade mark TARGET. Assuming the respondents to have adopted both the trade marks – TARGET and TARJET, but the licence is granted only for TARGET and not TARJET.  The use of the trade mark “TARJET” could be only to trade upon the goodwill of the appellants.  The adoption cannot therefore be said to be bonafide.

19.       The appellants have been using the trade mark since the year 1984 whereas the respondents adopted the trade mark only since 2001. The rights of the earlier user ought to be protected.

20.       For the reasons stated above, the appeal OA/39/2009/TM/AMD is allowed and the impugned order is set aside.  There shall be no order as to costs.

(V. Ravi)                                                                                         (S. Usha)

Technical Member                                                                        Vice-Chairman

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

The marks VISCO & VISCOF, if the letter “F“ is slurred that would be “VISCO”. If it is prescribed and the VISCO is written by a physician just by a line stretched then it would be read as VISCOF. Normally customers go by the prescription and purchase medicines. There is every possibility of confusion being caused. 13. In an application for registration the onus is on the applicant to prove that the mark deserves to be registered. The appellant has failed to prove the same. The registration of the trade mark therefore has to be rejected under Section 11 of the Act. 14. There is no dispute as to the use of the mark by the respondents since the year 1987. The appellants though claim use since 2002, in the application for registration they have given sales figures since 2000-2001 which is a contradictory statement. Even assuming the appellants had been using since the year 2000, the respondents are senior in use. 15. Having given all the findings in favour of the respondents, we do not think it proper to interfere in the impugned order. Accordingly, the appeal OA/46/2009/TM/AMD is dismissed with no order as to costs.

INTELLECTUAL PROPERTY APPELLATE BOARD

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

(CIRCUIT SITTING AT AHMEDABAD)

OA/46/2009/TM/AMD

 MONDAY, THIS THE 25^th DAY OF JUNE, 2012

Hon’ble Ms.S. Usha                                                       …  Vice Chairman 

Hon’ble Shri V. Ravi                                                      …  Technical Member

                                                                                               

M/s. Tauras Laboratories Pvt. Ltd.

8, Ruchi Apartments, B/h City Centre,

Near Swastik Cross Road,

C.G. Road, Navrangpura,

Ahmedabad-380009.                                                         … Appellant

(By Advocate:  Shri Akshay Vakil)

Vs

1.         M/s. Aristo Pharmaceuticals Ltd.,

            Mercantile Chambers

            3^rd Floor, 12 H.N. Heredia Marg

            Ballard Estate

            Mumbai, Maharashtra.                                      … Respondent No.1

2.         The Registrar of Trade Marks

            Office of the Trade Marks Registry

            through their office at

            15/27, National Chambers

            Ashram Road

            Ahmedabad.                                                     … Respondent No.2

                                   

                                               

                                               

          (By Advocate:  Shri Harshil Shah)

ORDER(No.170/2012)

Hon’ble Ms.S. Usha, Vice-Chairman:

            Appeal arising out of the order dated 24.3.2009 passed by the Deputy Registrar of Trade Marks allowing the opposition No.AMD-185126 and refusing the application No.1159172 in Class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’).

2.         The appellant filed an application under No.1159172 in Class 5 on 17.12.2002 claiming user since 20.9.2002. The said application was advertised in the Trade Marks Journal No.1320 dated 1.6.2004 at page No.1926. This was made available to the public on 19.10.2004. The notice of opposition was on various grounds like the registration would be in contravention of Sections 9(1)(a), 9(2)(a), 11(1)(a), 11(1)(b), 11(2)(a) & (b), 12 and 18(1) of the Act. The opposition was also based on the ground that the opponents were already the registered proprietors of the trade mark VISCO. The impugned mark namely VISCOF-DP is similar to their registered trade mark which would definitely cause confusion among the consuming public.

3.         The applicant filed their counter statement before the Trade Marks Registrar stating that the marks were totally different and the possibility of confusion was too remote and that the mark may be accepted for registration.

4.         The Deputy Registrar heard the matter and held that the opponent’s objection under Section 9 was sustainable and the applicant failed to produce any evidence to support their claim of use in Class 5 goods and as such had not satisfied the distinctiveness of the mark. The overall similarity of the rival marks if looked into would definitely mislead a person who is not dealing with medicinal goods and therefore the confusion was inevitable and therefore the objection under Section 11 of the Act was sustained. The objection under Section 18(1) of the Act was based on the ground that the opponents are the registered proprietors of the trade mark VISCO and therefore the applicant’s adoption was not honest and they cannot be the proprietors of the trade mark VISCOF-DP.  There was no proof filed by the applicant to place on record that they had conducted the market survey and found no identical/similar marks available in the market. The Registrar therefore held that the opposition be allowed and the applicant be refused registration.  Aggrieved by the said order, the appellant filed the appeal.

5.         We have heard Shri Akshay Vakil, Counsel for the appellant and Shri Harshil Shah, Counsel for the respondent.

6.         The learned Counsel for the appellant submitted that the application for registration of the impugned trade mark was filed on 17.12.2002 claiming user since 20.09.2002 and by a short period of time the appellant’s mark had acquired goodwill and reputation among the trade and public. The trade mark is VISCOF DP. The opponents/respondents trade mark is VISCO.

7.         The Counsel then submitted that the Registrar’s finding that the trade mark registration would be against the provisions of Sections 11 and 18 of the Act was not valid and legal.  The Counsel submitted the rivals marks were totally different and there was no possibility of confusion and deception.  The Counsel then relied on the judgment reported in 2004 (29) PTC 488 (IPAB) – Sandoz Limited, Appellant Vs. Hico Products & Ors., Respondents and submitted that the marks in that case were “DERMASOFT” and “DERMAGEN” where it was held that the suffix words takes a lead in finding the distinctiveness and that the words “SOFT” and “GEN” can be neither visually same nor phonetically identical.

8.         The learned Counsel for the respondents submitted that there is no evidence of their use. The adoption is dishonest. They do not satisfy the provisions of Section 12 of the Act.  Though the appellants claim user since 2002 there is no proof of use whereas the respondents have been using the trade mark “VISCO” since the year 1987.  The letters “DP” in the trade mark “VISCOF DP” is disclaimed and therefore the additional letters cannot be considered.

9.         The Counsel relied on few judgments in support of their case –

           

(i)         2012 (49) PTC 485 (IPAB) – Manish Masala Food Products, Applicants Vs. Radha Sarveshwar & Co. & Ors., Respondents - This is a case of rectification. In this case, the registration was cancelled as the proprietor had obtained registration by stating false date of user.

In the case on hand, the application was made claiming user since 2002 whereas in the affidavit of user filed before the Registrar at the acceptance stage, the appellant has claimed user since 2000 and sales figure for that period has been given which is a misstatement.

(ii)                     2007 (34) PTC 151 (IPAB) – Baroda Pharma Pvt. Ltd., Appellant Vs. Zeneca Limited & Others., Respondents and

(iii)                   TA/51/2003/TM/MUM (M.P.No.23 of 1990) (IPAB) – The Himalaya Drug Company, Appellant Vs. Lalitkumar Ratilal Fozdar & Ors. Respondents

These were relied on for the submission that though the suffix is different, the possibility of confusion was likely to occur.  Especially in medicinal products more care is to be taken to decide the issue of similarity.

(iv)                    2002 (25) PTC 398 (Guj) (DB)  -  Pravinbhai Jagjivandas Mehta, Petitioner Vs. Officine Lovato S.P.A., Respondent   

When the discretion has been shown to have been exercised arbitrarily the appellate Court ought not to interfere.

(v)                      2008 (36) PTC 478 (Bom) – Wyeth Holdings Corporation & Anr., Plaintiffs Vs. Burnet Pharmaceuticals (Pvt.) Ltd., Defendantand

(vi)              PTC (Suppl.) (2) 656(Mad) – Hindustan Lever Limited, Appellant Vs. Radha Products, Respondent

In order to decide the issue of deceptive similarity the marks have to be compared as a whole.

10.       We have considered the arguments of both the Counsel.

11.       The main issue that arises for consideration is that whether the marks are similar. The goods being medicinal products more care is to be taken to decide the same. In the case on hand the marks are VISCO & VISCOF DP. The appellant’s goods are for treatment of cough whereas the respondent’s goods are for treatment of gastric acidity. The ailments are different.  If one is taken for the other it would definitely cause bad effects. It has been held by various Courts that if by wrong pronounciation one consumes a medicine for the other then the injury is serious which cannot be compensated in terms of money.

12.       The marks VISCO & VISCOF, if the letter “F“ is slurred that would be “VISCO”.  If it is prescribed and the VISCO is written by a physician  just by a line stretched then it would be read as VISCOF. Normally customers go by the prescription and purchase medicines. There is every possibility of confusion being caused.

13.       In an application for registration the onus is on the applicant to prove that the mark deserves to be registered. The appellant has failed to prove the same. The registration of the trade mark therefore has to be rejected under Section 11 of the Act.

14.       There is no dispute as to the use of the mark by the respondents since the year 1987. The appellants though claim use since 2002, in the application for registration they have given sales figures since 2000-2001 which is a contradictory statement. Even assuming the appellants had been using since the year 2000, the respondents are senior in use.

           

15.       Having given all the findings in favour of the respondents, we do not think it proper to interfere in the impugned order. Accordingly, the appeal OA/46/2009/TM/AMD is dismissed with no order as to costs.

(V. Ravi)                                                                                       (S. Usha)

Technical Member                                                                      Vice-Chairman

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

whether the impugned trade mark can continue to remain on the register when already a mark was on the registerThe respondent herein filed a Civil Suit against the applicant for infringement of the trade mark “CLAVMOX”. The applicant is the prior registered proprietor of the trade mark. Person who is in any way interested in having removed the mark and is in any way affected or damaged if the mark continued to remain on the register then that person is said to be a person aggrieved. In case on hand the applicant is the registered proprietor of the trade mark as of 1998. An identical trade mark if allowed to be registered subsequently would definitely cause damage and therefore the applicant is a “person aggrieved”.

INTELLECTUAL PROPERTY APPELLATE BOARD

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

(CIRCUIT SITTING AT AHMEDABAD)

M.P. No.105/2010

 in

ORA/95/2010/TM/AMD

AND

ORA/95/2010/TM/AMD

 MONDAY, THIS THE 25^th DAY OF JUNE, 2012

Hon’ble Ms.S. Usha                                                       …  Vice Chairman

Hon’ble Shri V. Ravi                                                      …  Technical Member

                                                                                                   

M/s. Cipla Ltd.,

Mumbai Central

MUMBAI-400008.                                                              … Applicant

(By Advocate:  Shri Ajay Sahni)

Vs

Mr. Rajiv Sukhija.

trading as

M/s. S.R. Pharmaceuticals

316, Dawa Bazaar, Film Colony,

Jaipur,

RAJASTHAN.                                                                    … Respondent

                                               

  (By Advocate:  Shri S.K. Bansal)

ORDER (No.169/2012)

Hon’ble Ms.S. Usha, Vice-Chairman:

            This is an application for rectification of the trade mark “CLAVMOX” registered under No.1146944 in Class 5 under the provisions of the Trade Marks Act, 1999 (in short ‘Act’).

2.         The applicant is a registered proprietor of the trade mark “CLAVMOX” registered under No.799706 in Class 5 in respect of pharmaceutical and medicinal preparations. The same has been registered as early as 2005 and has been renewed up to 2018. The applicant is one of the largest Indian pharmaceutical company carrying on business for the past 75 years and has a turnover exceeding Rs.5000 crores. The applicant is exporting bulk drugs to over 150 countries of the world.

3.         The applicant adopted the trade mark “CLAVMOX” in respect of pharmaceuticals and medicinal preparations in the month of April, 1998.  The company made all efforts to ascertain that no other person was using an identical and/or deceptively similar trade mark to the said trade mark “CLAVMOX”. The applicant thereafter applied for registration of the trade mark. The mark was advertised and there was no opposition. The trade mark “CLAVMOX” proceeded to registration and the mark was registered on 30^th May, 2005. The applicant had launched a pharmaceutical product under the trade mark “CLAVMOX” in the month of February, 2008.

4.         In the second week of October, 2008 the applicant came to know for the first time that the respondent had launched a pharmaceutical product bearing the trade mark “CLAVMOX” and therefore issued cease and desist notice on 30.8.2008. The respondent herein sent a reply to the notice issued by the applicant. From the reply, the applicant seems to have known the fact that the respondent has filed a Civil Suit against the applicant in the District Court, Jaipur.  The applicant has filed its written statement as well as a counter claim in the said Suit.

5.         The applicant was surprised that despite the earlier registration  they came to know that the respondent was also granted a subsequent registration for an identical trade mark “CLAVMOX”. When no grounds have been made out under Section 12 of the Act, the respondents registration does not survive. The adoption of the impugned trade mark by the respondent amounts to infringement of the applicant’s registered trade mark.  From the records available in the Trade Marks office it is also seen that a search report along with the examination report has been sent to the respondent calling for an explanation how an identical trade mark could be registered when a trade mark was already pending registration.  Despite the fact that the Registry had sent the examination report along with the search report the Registrar has proceeded to register the impugned trade mark. The registration thus granted is in contravention of the provisions of Section 11 of the Act.  The adoption by the respondent is malafide with an intention to violate the exclusive proprietary right of the applicants. The adoption leads to confusion and deception amongst the public. The use of an identical mark by the respondent amounts to infringement of the applicant’s registered trade mark. 

6.         The applicant is a “person aggrieved” by the existence of the entry relating to the trade mark as the applicants are prior adopters, prior users and prior registered proprietors of an identical trade mark “CLAVMOX”.  The respondents have fraudulently claimed registration by making false and misleading statements before the Registrar of Trade Marks. The impugned registration is in contravention of the provisions of the Act. The impugned registration causes embarrassment, loss, inconvenience and hardship to the applicant. The impugned registration has been granted without sufficient cause and is wrongly remaining on the register. The trade mark therefore ought to be cancelled in the interests of the purity of the register of trade marks. 

7.         The respondent herein filed their counter statement stating that they have been carrying on the business of medicinal and pharmaceutical preparations since the year 1988 through their predecessors. The present respondent is using trade mark “CLAVMOX” since 1.10.2002 continuously without any interruption whatsoever. The respondent applied for registration on 28.10.2002 and obtained registration in the year 2005. The respondent filed a Civil Suit before the District Court on 12.5.2008.  The applicant herein did not appear in the District Court and an ex parte decree was passed on 10.10.2002.  The registered proprietor, that is, the respondent herein issued a legal notice under Order 21 of the CPC for execution of the aforesaid decree which was duly received by the applicant herein. The applicant filed an application to set aside the ex parte decree and the same was allowed by the District Court on mutual consensus of both the parties. The applicant for rectification also filed the Written Statement along with the counter claim.

8.         The applicant herein had filed the application for registration on 23.4.1998 as “proposed to be used”.  It is an admitted case that they launched their product in February, 2008 whereas the respondent herein have used the trade mark “CLAVMOX” since 1.10.2002. and therefore the respondents have been the first and prior user of the trade mark “CLAVMOX”. Merely filing an application for registration does not create any right in favour of the applicant. It is settled principle of law that the applicant cannot claim any ownership upon an applied trade mark merely by filing an application.

9.         The rectification application is filed with improper and malafide intentions. The applicant is a not a “person aggrieved” and therefore has nolocus standi to file this rectification application. Therefore the ground taken by the applicant for rectification is wrong and not admitted by the respondent.  The respondent prays that the application for rectification be dismissed with costs.

10.       We heard Shri Ajay Sahni, Counsel for the applicant and Shri S.K. Bansal, Counsel for the respondent.

11.       The learned Counsel for the applicant submitted that they adopted and used the trade mark “CLAVMOX”.  They applied for registration of the trade mark “CLAVMOX” on 23.04.1998.  The mark was “proposed to be used” on the date of application.  The impugned trade mark was also an identical trade mark “CLAVMOX” falling in the same Class 5.  The application was made on 28.10.2002 claiming user since 1.10.2002 under application No.1146944.  The mark was registered on 22.10.2005.  The user though claimed since 1.10.2002, the 1^st invoice is since 1.4.2004.

12.       The Counsel then submitted that the licence dated 4.10.2002 to manufacture drug does not amount to use.  The Suit filed by the respondent against the applicant is pending.  The Counsel relied on Section 11,18,23 & 34 and 109 of the Act.  The Counsel finally relied on the legal user certificate and the Examination report.  The Counsel submitted that in the examination report it was clearly stated that already an identical mark was pending registration and the search report was enclosed. The impugned trade mark was used since 2002 which is definitely subsequent to that of the applicant’s use.  The Counsel then relied on the judgment reported in 1993 IPLR 39 – Charak Pharmaceuticals, Applicants Vs. M.J. Exports Pvt. Ltd., and Another, Respondents and submitted that the use is only for 27 days and that no amount of sales effected after the date of application can be advanced for honest concurrent use.

13.       The Counsel then relied on MANU/IC/0062/2011 – Satish Kumar Lamba, trading as M/s. Satish Soap Mills Vs. the Assistant Registrar of Trade Marks, New Delhi - wherein the facts were identical to that of this case and the mark was not allowed to be registered as there was already a mark on the register which was reflected in the search report. 

14.       The concurrent use should be of a long period unhindered, uninterrupted and unchallenged.  The concurrent use is to be seen as on the date of application and not thereafter – MANU/IC/0045/2005 – Sudhir Batra, Appellants Vs. Arjies Aluminium Udyog and the Assistant Registrar of Trade Marks.

15.       The applicant had adopted the mark and applied for registration prior to the respondent and therefore respondent’s adoption cannot be said to be bonafide – MANU/IC/0030/2009 – Medical Technologies Ltd. Vs. Neon Laboratories Pvt. Ltd. and the Registrar of Trade Marks.

16.       The applicant’s entitlement to registration of a trade mark has to be decided with reference to the facts as on the date of application for registration – MANU/IC/0001/2008 – Plus Systems, Inc. and Visa International Service Association Vs. Plus Computer Systems Ltd., Assistant Registrar of Trade Marks and The Registrar of Trade Marks.

17.       The settled principle of law relating to trade mark is that there can be only one mark, one source and one proprietor – MANU/SC/0646/1994 – Power Control Appliances and Ors., Appellants Vs. Sumeet Machines Pvt. Ltd., Respondents with Sumeet Research and Holdings, Appellants Vs. Sumeet Machines and Anr., Respondents.

18.       A trade mark registration obtained by giving wrong date of user cannot remain on the register – 2012 (49) PTC 485 (IPAB) – Manish Masala Food Products, Applicants Vs. Radha Sarveshwar & Co. & Ors., Respondents.

19.       The learned Counsel for the respondent submitted that the applicants have applied for registration in the year 1998 as “proposed to be used” and they obtained registration on 30.05.2005. The respondents applied for registration on 28.10.2002 claiming user since 01.10.2002 and obtained registration on 28.10.2005. The applicants started using the trade mark in 2008 and filed this rectification application in the year 2010.  The respondent’s user is since 2002.

20.        The Counsel then relied on Section 32 and submitted that the impugned trade mark though had not acquired distinctiveness but on the date of rectification had acquired distinctiveness by use. The Counsel then submitted that their adoption was not dishonest as the applicant’s mark was not available in the market. The drug licence was issued only on 18.12.2007. The applicants mark was a Part B registration. The respondent’s drug licence was issued as early as 4.10.2002.

21.       The respondent’s trade mark has been used continuously since the year 2004.  In the year 2008, a Civil Suit was filed by the respondents against the applicant.

22.       The following judgments were relied on by the respondent –

(i)                 2008 (36) PTC 523(Del) (DB) – Yash Arora, Appellant Vs. Tushar Enterprises & Ors., Respondents – There is no statutory provision making a search essential before filing an application for registration.

(ii)               AIR 1978 Delhi  250 – Century Traders, Appellant Vs. Roshan Lal Duggar & Co. and others, Respondents.- Mere presence of the mark in the register will not prove its use and Priority in use prevails even over a registered proprietor.

(iii)             PTC (Suppl) (2) 564 (Del)- L.d. Malhotra Industries, Appellants Vs. Ropi Industries, Respondents – Appicant prior and anterior in use and opponent prior in registration.  Applicant has a better right and the application for registration cannot be objected.

23.       The Counsel further submitted that the Manish Masala case (cited supra) relied on by the applicant has no relevance to the case on hand.

24.       In rejoinder, the learned Counsel for the applicant submitted that all the judgments relied on by the respondent were not relevant as these were in a passing off action and in a registration case and not in a rectification proceedings.

25.       We have heard and considered the Counsel on both sides and have also gone through the pleadings and documents.

26.       The rectification application shall be filed only by a person aggrieved and not by any person as in the case of an opposition proceedings.  The respondent herein filed a Civil Suit against the applicant for infringement of the trade mark “CLAVMOX”.  The applicant is the prior registered proprietor of the trade mark.  Person who is in any way interested in having removed the mark and is in any way affected or damaged if the mark continued to remain on the register then that person is said to be a person aggrieved.  In case on hand the applicant is the registered proprietor of the trade mark as of 1998.  An identical trade mark if allowed to be registered subsequently would definitely cause damage and therefore the applicant is a “person aggrieved”.

27.       As held by Lord Herschel in Powell’s TM case – 1894 (11) RPC 4, where it can be shown that the applicant is in the same trade as the person whose trade mark is registered and wherever it can be shown that if the trade mark if remained in the Register would or might limit the legal rights of the applicants, then the applicant is said to be a “person aggrieved”.  The applicant herein is not able to carry on the business using the trade mark and therefore is a “person aggrieved”.

28.       The only issue is whether the impugned trade mark can continue to remain on the register when already a mark was on the register.  The examination report and the search report produced by the applicant would clearly prove that an identical trade mark for identical goods was already on the register. The officer concerned ought not to have granted registration when an identical trade mark was pending registration.

29.       The impugned trade mark is an entry wrongly made. The trade mark should not have been registered for any reason and has been wrongly remaining on the register. The impugned trade mark therefore ought to be removed for an entry wrongly made.

30.       The other reference was that the applicant’s mark was not put to use on the date of application of registration of the impugned trade mark.  The impugned trade mark when said to be wrongly made, the conduct of the applicant is immaterial.  In Re Addly Burnis TM, Farwell J held, “No consideration of the rights of third persons arise except as against the person who is on the register, because he is claiming a monopoly to the exclusion of the public at large, and if…….the Court finds out in the course of the case that the mark is wrongly on the Register, however great the demerits of the applicant, the Court is bound to set the Register right for the benefit of the public at large.”

31.       The Registrar also has the power to rectify the register on his own motion in such case.  Therefore we are of the opinion that the impugned trade mark deserves to be rectified.  We are not going into the merits of the matter for the above reasons.

32.       The officers in charge of the registration shall be more cautious while granting registration.  In the instant case, the Registrar was aware of the earlier pending identical trade mark and has issued an examination report calling upon the applicants (the respondent herein) for an explanation as to how the registration can be granted as already an identical mark was pending.  We think if strict view is taken by the Controller General in such cases then this can be avoided.  If there is a direction that severe consequences will follow in such cases then the officers will be more cautious. A suitable computer alert at the time of printing of registration certificate would avoid such embarrassing situation in the future.

33.       The application ORA/95/2010/TM/AMD is therefore allowed with a direction to the Registrar of Trade Marks to cancel the trade mark registered under No.1146944 in Class 5.  There shall be no order as to costs.  M.P. No.105/2010 is dismissed as infructuous.

(V. Ravi)                                                                                         (S. Usha)

Technical Member                                                                        Vice-Chairman

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