2007 (11) TMI 664 - Board - Indian Laws

Summary

Issues Involved:
1. Condonation of Delay
2. Person Aggrieved
3. Grounds for Expunging Trade Mark
4. Distinctiveness and Descriptiveness of Trade Mark
5. Likelihood of Confusion

Issue-wise Detailed Analysis:

Condonation of Delay:
The applicant filed a miscellaneous petition seeking condonation of delay in filing its reply to the counter-statement. The delay was attributed to the lawyer at Chennai who did not draft the rejoinder timely. The court, after examining the correspondences between the applicant's representatives and the lawyer, found no negligence or inaction on the part of the applicant. The delay was condoned, and the rejoinder and documents were allowed to be taken on record. The principle laid by the Apex Court in Ramnath Sao @ Ramnath Sahu and Ors. v. Goverdhan Sao and Ors. was applied, emphasizing that "sufficient cause" should receive a liberal construction to advance substantial justice.

Person Aggrieved:
The applicant claimed to be a person aggrieved under Section 57 of the Trade Marks Act, 1999. The court referred to the Supreme Court's observations in National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg. Co. Ltd. and Anr., which stated that the expression "aggrieved person" includes anyone who has used the trade mark in question before registration or against whom an infringement action is taken or threatened. The court concluded that the applicant, being in the same business and prejudicially affected by the respondent's trade mark registration, had the locus standi to file the application.

Grounds for Expunging Trade Mark:
The applicant argued that the entry of the respondent's trade mark DROT was made without sufficient cause and in contravention of Sections 9, 11, and 18 of the Act. The court examined whether the trade mark was devoid of distinctive character, descriptive, or indicative of the composition, and whether it was likely to deceive or cause confusion. It was found that the trade mark DROT was derived from the basic drug Drotaverine Hydrochloride, making it descriptive and not inherently distinctive. The court held that the impugned registration of DROT was in violation of Section 9 of the Act.

Distinctiveness and Descriptiveness of Trade Mark:
The respondent admitted that the trade mark DROT was derived from the basic drug Drotaverine Hydrochloride. The court noted that descriptive words are not eligible for registration unless they have acquired distinctiveness through use. The evidence provided by the respondent, including sales invoices and promotional expenses, was insufficient to prove that the mark had acquired distinctiveness before or after registration. The court concluded that the mark DROT did not qualify for registration under Section 9 and was not protected under Section 32 of the Act.

Likelihood of Confusion:
The court applied the principles of comparison of trade marks, considering overall similarity, phonetic similarity, and the likelihood of confusion among the public. It was found that the trade marks DROTIN and DROT closely resembled each other visually and structurally, and both were used for similar goods under the same class. The court emphasized that even the slightest confusion in medicinal products could be hazardous to health. The court concluded that the rival marks were likely to cause confusion and deception, thereby supporting the applicant's claim.

Conclusion:
The application for expunging the trade mark DROT was allowed. The Registrar was directed to expunge the trade mark No. 1109280 from the Register of Trade Marks. The miscellaneous petition for condonation of delay was also granted. There was no order as to costs.