INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
CIRCUIT SITTING AT KOLKATA
M.P. No.94/2007 in TA/7/2005/TM/KOL
AND
TA/7/2005/TM/KOL
(TMA/11/1997)
FRIDAY, THIS THE 20th DAY OF APRIL, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Shri V. Ravi … Technical Member (Trade Marks)
Merck Limited
Shiv Sagar Estate “A”
Worli
Dr. Annie Besant Road
MUMBAI-400018. … Appellant
(substituted by Order dated 20.4.2012 in M.P. No.94/2007)
(By Advocate: Shri Gautam Chakraborty and R.K. Khanna)
Vs.
1. M/s. Jupiter Pharmaceuticals Limited
25, Eden Hospital Road
Calcutta-700073.
2. The Registrar of Trade Marks
3. Deputy Registrar of Trade Marks
4. Assistant Registrar of Trade Marks
Trade Marks Registry
Kolkata. … Respondents
(By Advocate: Shri H.P. Shukla)
ORDER(No.92/2012)
Hon’ble Smt. Justice Prabha Sridevan:
The appellant opposed the registration of the mark LIVOSIN claiming user from 4-4-1974under No 478108. This was advertised before acceptance on 16.10.1994, in class 5 for medicinal preparation. The opposition was disallowed.
2. The appellants are the proprietors of the mark LIVOGEN as of 14-12-1942. They claim that the impugned mark is identical and deceptively similar to theirs. According to them the adoption of the mark was dishonest and it should not be allowed to be registered.
3. The respondent filed its counter statement stating that they have been in the business of manufacture and sale of Ayurvedic preparations for many years and they market products bearing brand names like Glycoseptol, Terex, Livosin etc.
4. The mark was invented and adopted on 4-4-1974. They have advertised their products extensively. Their mark Livosin has acquired a huge reputation. There are hundreds of marks with the prefix ‘Livo’ and the two marks will never conflict with each other.
5. The appellant produced evidence to show their sales and promotional expenditure and they contended that the overall effect of the two marks would result in confusion. The respondent also produced evidence to show their sales and advertisement materials and contended that suffix ‘SIN’ and ‘GEN’ will never be confusing. The Registrar disallowed the opposition.
6. The learned counsel for the appellant submitted that the words “deceptively similar” have been used repeatedly in the Act with an intent; and that the likelihood of causing confusion will not disappear merely because the mark has remained long in the register.
7. The question of the assignee’s right to be heard had been raised in the proceedings, so the learned counsel for the appellant referred to 2000 RPC 536 - Pharmedica GMBH’S Trade Mark Application.
8. M.P.No.94/2007 has been filed for amendment of the Memorandum of Appeal in view of the assignment of the trade mark “LIVOGEN” in favour of Merck Ltd. It is opposed by the respondent who has filed the affidavit in opposition stating that once it has been transferred the appellant has nolocus standi as the cause title and interest in respect of the mark stands transferred which has taken place in December, 2000 and the application was made in August 2007, and that it is barred by limitation.
9. In 2009 (41) PTC 385 (Del.) – Classic Equipments (P) Ltd. , Petitioner Vs. Johnson Enterprises & Ors., Respondents, the Hon’ble Delhi High Court held that the Registrar cannot go behind the terms of the assignment and he is only required, to satisfy himself about the true construction of the assignment.
10. In the present case, the respondent does not deny the transfer of rights. According to him, because of the assignment, the appellants herein had lost their right in the mark. But the appellants are bound by law to protect whatever rights they had even after its transfer. As regards the controversy on hand, in the impugned order, the Registrar held that the opponent, namely, the appellant herein had failed to point out any dishonest attempt made on the part of the applicant (the respondent herein) to adopt the impugned mark. The Registrar also found that the respondent was using the mark extensively. The Registrar had looked at both the marks and compared them and found that “LIVOSIN” and “LIVOGEN” are not deceptively similar. From the evidence the Registrar also found that there is no likelihood of deception or confusion. The learned Counsel for the appellant submitted that when the impugned order was passed, the Cadila judgment – (2001) 5 SCC 73 - Cadila Health Care Ltd., Appellants Vs. Cadila Pharmaceuticals Ltd., Respondent was not decided. This made a difference with regard to the stricter approach to be adopted while deciding deceptive similarity of medicinal products as compared to other goods. The learned Counsel also submitted that the definition of “deceptively similar” under Section 2(d) of the Trade and Merchandise Marks Act, 1958 used the phrase “likely to deceive” or “cause confusion”. Therefore, the mere passage of time cannot exclude the possibility of likelihood of confusion. He mainly urged that the matter be remanded back to enable the Registrar to consider the case in the light of the Cadila case(cited supra).
11. The learned counsel for the respondent objected to the right of the appellant to be heard and referred to Rule 94. He then referred to the IPAB decision on I-VIT and K-VIT - M.P.No.02/2007 in OA/01/2007/TM/KOL, “Meromer” and “Meronem” - 2007 (34) PTC 469 (DB) (Del.) – Astrazeneca UK Ltd. & Anr., Appellants Vs. ORCHID Chemicals & Pharmaceuticals Ltd., Respondent,“MICROTEL” and “MICRONIX” - 1994 (14) PTC 260 (SC) – J.R. Kapoor, Petitioner Vs. Micronix India, Respondent and submitted in all such matters it was held that the common features must be ignored and the distinctive part should be considered.
12. It is brought to our notice by the appellant that they have filed an affidavit of H.U. Shenoy, Company Secretary of Merck Ltd. to show that Glaxo India Limited was registered as the proprietor of the trade mark “LIVOGEN” from 1st July, 1968. It has been renewed from time to time. By the deed of assignment dated 28.12.2000, E. Merc (India) Ltd. whose corporate name has changed to Merck Limited has become the subsequent proprietor. Their case is that appropriate forms have been filed and by communication dated 27.11.2006 the Registrar of Trade Marks had informed the appellant that the necessary entry had been made in the register.
The following decisions were cited:
(i) 2001 5 SCC 73 – Cadila Health Care Ltd., Appellant Vs. Cadila Pharmaceuticals Ltd., Respondent – The two marks were “Falcigo” and “Falcitab”. They observed as follows:
“25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant’s drug, of which passing-off is alleged, is meant for curing the same ailment as the plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems…”
It was submitted that Courts must be particularly vigilant in cases where medicine is concerned since incorrect intake of medicine may result in loss of life. This is the reason why the learned Counsel for the appellant requested us to send the matter back to the Registrar to decide the matter in the light of the Cadila case.
(ii) [1963] 2 SCR 484 – Amritdhara Pharmacy Vs. Satyadeo Gupta –
“It was held that the question whether a trade name is likely to deceive or cause confusion by its resemblance to another already registered is a matter of first impression and one for decision in each case and has to be decided by taking an over all view of all the circumstances. The standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect recollection – It was held further that the two names as a whole should be considered for comparison and not merely the component words thereof separately.”
(iii) 2000 RPC page 536 – Pharmedica GMBH’S Trade Mark Application was relied on to show that the Registrar has powers to substitute an opponent.
13. The respondent referred to the order of the IPAB in –
(i) M.P.No.02/2007 in OA01/2007/TM/KOL – Semit Pharmaceuticals & Chemicals, Appellant Vs. The Deputy Registrar of Trade Marks, Kolkata and another in relation to the mark I-VIT and K-VIT. Both the marks were used in medicine business and the Board held that there was no likelihood of confusion.
(ii) They also relied on 2007 (34) PTC 469 (DB) (Del.) – Astrazeneca UL Ltd. & Anr., Appellants Vs. ORCHID Chemicals & Pharmaceuticals Ltd., Respondent where the marks were “Meromer” and “Meronem”. Those were also medicinal preparations and the Court held that the prefix was part of the molecule “Meropenem” and was used by a number of preparations in the market and that there was no phonetic or deceptive similarity.
(iii) In 1994 (14) PTC 260 (SC) – J.R. Kapoor, Petitioner Vs. Micronix India, Respondent , the Supreme Court held that “MICROTEL” and “MICRONIX” were totally dissimilar and the word ‘micro’ was a common or general name, descriptive of the products sold.
(iv) In 1998 3 MLJ 214 – Indo Pharma Pharmaceutical Works Ltd., Appellants Vs. Citadel Fine Pharmaceuticals Ltd., Respondent “ENERGJEX” and “ENERJASE” were the two marks and the Madras High Court held that the suffix ‘jex’ and ‘jase’ were totally different.
14. Almost all the decisions submitted by the learned Counsel for the respondent related to medicinal preparations. The Court had considered the marks to see if there is likelihood of confusion. For liver preparation there are many medicinal products which start with the drug “LIV” and so on and therefore as a medicinal preparation it is also common for the trade to have a common suffix or prefix. The differing suffixes ‘SIN’ or ‘GEN’ are not similar and the Registrar was of the opinion that the impression created on the whole by the two marks would not cause confusion. We do not think that this decision is arbitrary or totally unacceptable warranting interference. We are also of the view that the two marks are not likely to cause confusion or deception.
15. The appellant has produced the documents to show how the interest has devolved. The Miscellaneous Petition No.94/2007 is allowed.
16. For all the above reasons, the appeal TA/7/2005/TM/KOL is dismissed. There will be no order as to costs.
(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.)
