INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai,
Teynampet, Chennai-600018
*****
(CIRCUIT BENCH SITTING AT AHMEDABAD)
ORA/14/2008/TM/AMD
MONDAY THIS THE 16th DAY OF JULY, 2012
HON’BLE MS. S. USHA … VICE CHAIRMAN
HON’BLE SHRI V. RAVI … TECHNICAL MEMBER
M/s Mehtachem Industries,
a Regd. Partnership firm, doing business at
Amrutmanthan House Sadar,
RAJKOT -360 001
and factory at :
G-525, GIDC Lodhika,
P.O.:METODA (Dist. Rajkot), Gujarat. … Applicants
(Represented by Advocate: Shri Y.J. Jasani)
Versus
1.M/s Dhanvantary Pharmacy,
a partnership firm, having address:
C-14, M.P. Shah Industrial Estate,
JAMNAGAR (Gujarat)-361 002. … Respondent
2.The Asst. Registrar of Trade Marks,
The Trade Marks Registry Branch at:
National Chambers, 1st Floor,
Near City Gold Cinema,
Ashram Road,
AHMEDABAD – 380 009.
(Represented by None)
3.The Controller General of Trade Marks & Patents,
Boudhik Smapada Bhavan,
Nr. Antop Hill Head Post Office,
S.M. Road, MUMBAI 400 037.
ORDER (No. 184/2012)
HON’BLE SHRI V.RAVI, TECHNICAL MEMBER:
The applicant are seeking removal of the registered trade mark NAVTAJ under No.1202611 in class 5. The grounds for rectification are briefly mentioned below:-
a) The applicants are engaged in the business of manufacturing, marketing and selling various ayurvedic, medicinal and pharmaceutical preparations since 1974 under the name & style of M/s Mehtachem Industries at Rajkot.
b) To distinguish their products from others in the market they have coined the trade mark SARTAJ in respect of ayurvedic, medicinal and pharmaceutical preparations including the Hair Oil since February, 1994. They have also coined the word SARTAJ AMLA hair Oil in 1996 and SARTAJ THANDA hair oil in 2000 along with a different combination word “Gunkari Thanda Ayurvedic Tel ” in Hindi script. The trade mark label & artistic work for SARTAJ THANDA hair oil is printed in red coloured background with SARTAJ in Hindi as well as in English together with a device of CROWN thereon and also a device of Saint/Rishi in green coloured leaf at the centre. They have also secured license for manufacturing & selling ayurvedic preparations.
c) The applicant have registered the trade mark SARTAJ (word per se) under No. 648492 in respect of “Ayurvedic, medicinal and pharmaceutical preparations” in Class 5. The application was made in December, 1994 and is currently valid and duly renewed upto December, 2014. They had subsequently slightly amended the trade mark label and also secured the registration in Class 3 & 5 under No. 933257 and 933258 as of June, 2000. They have further secured copyright on the artistic work for the trade mark label titled SARTAJ under the Copyright Act, 1957.
2. In May, 2004, the applicant came to know from the market that the respondent in collusion with some unscrupulous traders have been using an identical / deceptively similar trade mark NAVTAJ in identical lettering style, lay-out, get-up with identical/confusingly similar device of CROWN at the top and also confusingly similar device of Saint/Rishi at the Centre on red coloured background having green border. The applicant were constrained to issue a Cease and Desist Notice to the respondent who sent an evasive and misconceived reply. It was later found that the respondent had surruptiously secured registration for NAVTAJ under No. 1202611 in Class -5. In response to the Notice, the respondent/registered proprietor pointed out that the two labels are distinguishable as the word RAJ DHANVANTARY had been added in Hindi & English language.
3. However, as a diversionary tactic, after the third and final cease and desist Notice, the respondent temporarily refrained from using the impugned mark NAVTAJ label but quietly obtained its registration from the trade mark registry claiming false and fictious use since 1st April, 2003. The respondent had filed their application on 30th May, 2003. The applicant were completely taken aback and state in view of the foregoing, the impugned mark in the name of respondent is based on fraud and misrepresentation. The evidence in respect of the application for rectification is an affidavit of one Gautambhai H. Mehta, the partner of M/s Mehtachem Industries. The applicant therefore, pray that the impugned mark be removed from the register as it is in contravention of Section 2(1)(zb)(ii), 9, 11, 12 and 18(1) of the Trade Marks Act, 1999.
4. The case of the answering respondent is as follows:-
The respondent is the owner & partner of the firm M/s Dhanvantary Pharmacy. They are engaged in the business of manufacturing & marketing of different types of ayurvedic, pharmaceutical and medicinal preparations. They started a sole proprietory concern in September, 2004 under the trading style RAJ DHANVANTRY. In order to distinguish its products from others they coined the trade mark NAVTAJ and started using it since April, 2003. The trade mark NAVTAJ in the form of a label consist of an imaginary drawing of Rishi(Saint) writing on a leaf with a pen in respect of ‘Ayurvedic Oil’. This label contains the House mark “RAJ DHANVANTRY” which has been coined based on the belief that nine relief can be obtained by the use of said ayurvedic Oil. The nine relief’s are described on the packaging material in Gujarati language. The suffix TAJ is a fanciful word in respect of head of the human body as the oil is applied on the head and the novel word NAVTAJ has been coined by the respondent/registered proprietor. The respondent had applied for the registration of the impugned trade mark under No. 1202611 in Class 5 on 30.05.2003 and the registration certificate after due process has been granted by the Registrar. The respondent state that the rival marks are totally different and no case for removal of the registered trade mark has been made out by the applicant. The evidence in support of the registration was an affidavit filed by one Shri Rajanbhai Jayantilal Bhagyodaya, a partner of Dhanvantri Pharmacy.
5. The matter was listed for hearing on 09.04.2012 and adjourned to the following date. None represented for the respondent. Shri Y.J. Jasani appeared on behalf of the applicant. We heard the counsel for the applicant and gone through the pleadings before deciding the matter.
6. On the issue of ‘Person Aggrieved’ the applicant being in the same trade and a prior registered proprietor for the same goods namely ‘hair oil’ have a grievance that a deceptively/closely similar mark cannot be allowed to co-exist in the register as it would lead to public mischief. As the applicant’s trade are being hampered, we rule that the applicant has a locus standi to be heard as a person aggrieved.
7. Objection has been raised u/s 2(1) 2(zb) (ii) by the applicant. That part of the section further elaborates what is a trade mark. Section 2(1)(zb) subsumes two essential ingredients. A trade mark should be represented graphically (that is in paper form). The second requirement it should be capable of distinguishing goods/services of one person from others. Sub-clause (ii) then states that the mark should indicate a connection in the course of trade between the goods and the proprietor to establish source or origin of the goods or services. It is the applicants case that the impugned mark is incapable of distinguishing the goods of the respondent and so do not qualify as a trade mark. Seeing is believing. The two marks are shown below:-
Applicants registered Trade Mark
Respondents registered Trade Mark
Let us get a good fix on the rival labels. One look is enough to conclude that the competing marks are deceptively similar and confusion in the market is inevitable. The answering respondent have in their counter – statement justified the adoption of the impugned mark through laboured sterile and contrived arguments. The respondents say in para 7 therein that ‘red and green are natural colours’ and it is common to trade for hair oil. Also the device of Rishi/Saint and background of snow white mountain are also common to trade. The label contains an imaginary picture of a saint with a pen and a leaf in hand. All this does not however explain why meddle with the business of a rival in the market for 20 years?, What is the compulsion to copy a similar mark other than trade on the goodwill and reputation of the applicant. We are satisfied that the impugned mark which is blatant copy of the applicant’s mark with minor difference cannot be regarded as capable of distinguishing the goods of the respondent. Now, can it serve as a source indicator of the respondent. We, therefore, rule that section 2(1) (zb)(ii) is a bar that prohibits the registration of the impugned mark.
8. We next look at the objection raised under section 11 on relative grounds. It is unwise to indulge in a minute analysis of the label. Unwary customers of average intelligence and imperfect recollection will see the similarity of the idea of the competing mark and are reasonably likely to be deceived by the confusion between the rival goods. When compared side by side (which is a wrong test) there may be minor differences as was harped to by the respondent in the Counter Statement. But the respondent have not discharged with any conviction, the heavy onus cast on them to establish there is no possibility of confusion. The class of persons who will buy the goods and manner of trade etc. leads us to believe that there will be confusion as to origin. The two marks are sufficiently similar to confuse the public that both the competing products emanates from the same source or are closely connected. The dominant components of the two mark i.e. device of Rishi/Saint with confusingly similar colour combination leads us to the conclusion that the rival marks are conceptually similar. Even the word ‘Navtaj’ is deceptively similar to ‘Sartaj’ as it is embossed with the device of crown in both labels. The reach and import of section 11(1) is wide enough to prohibit registration of the impugned trade mark. The demand for ‘hair oil’ will be largely based on the pictorial image of the saint on the label. The consumer being a common man cannot be expected to make fine distinction between the two labels. What burns in the memory is the picture of saint with confusingly similar colour combination. In short, we uphold the objection raised under section 11(1) by the applicant.
9. Objection have also raised under Section 12 that the respondents impugned mark do not deserve to co-exist in the register. The impugned mark was born 10 years after the applicant. By then the applicant had established and built up their brand in the market. Both the applicant and respondent are from Gujarat. Adoption of a closely resembling mark for the same goods raises the question of bone fide as the essential features of the applicants trade mark has been copied and camouflaged by the respondent which excites suspicion. The applicant took immediate legal steps to stop the respondents use of the impugned mark as evidenced by successive Cease and Desist Notice with great promptitude. The burden lies on the applicant to prove commercial honesty of adoption and use of the mark. Mere concurrent use is not sufficient in law. It must be honest. It is the duty of the respondent to satisfy the conscience of the Board that the user was honest. Alleging many producers in the trade use device of Saint or similar colour combination is an escapist and evasive response. Both the applicant and the general public will be put to tremendous hardship. Since the applicants marks is put to peril, we also uphold the objection raised under Section 12 of the Act.
10. The last of the grounds on which the cancellation from the register of the impugned mark is sought is based on the allegation that the respondents are not the proprietor of the impugned mark within the meaning of Section 18(1) of the Act. There can be no equity for a dishonest person. In our view the respondent’s adoption and use of the impugned mark is questionable. It deprives the applicants the exclusive statutory right to his mark for the same goods by the use and registration of a colourably similar trade mark. The respondents had knowingly and willfully adopted a closely resembling trade mark. This amounts to aggravated piracy or misdemeanor. The registration of the impugned trade mark is bad in law and diminishes the sanctity of the register leading to associated damages such as proliferation of litigation. The proprietor of a registered trade mark crave for certainty and simplicity in the administration of the Act and not be constantly on the lookout for potential pirates. The collateral consequence is that the impugned mark needs to be expunged from the register as the respondent cannot be considered as the true, lawful and the legitimate owner and proprietor of the impugned trade mark.
11. In the result, ORA/14/2008/TM/AMD is allowed and registered trade mark NAVTAJ (LABEL) under No. 1202611 in class 3 is removed from the register. The respondent is directed to pay a sum of Rs.5,000/- as cost of these proceedings to the applicant.
(V.RAVI) (S.USHA)
Technical Member Vice Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
