9911796707
TMI Blog2007 (11) TMI 664X X X X Extracts X X X X X X X X Extracts X X X X ..... ical preparations, which trade mark is valid and subsisting. The sale of applicant's goods bearing the trade mark DROTIN commenced in 1997 and the applicant has spent substantial amount of money and efforts in promoting the said trade mark. The respondent, a private limited company, is engaged in an established business of manufacturing and merchandising of medicinal and pharmaceutical preparations and allied and cognate goods and has in or about June, 2002 conceived and honestly adopted the trade mark DROT and obtained registration thereof under No. 1109280 as of 5.6.2002 in class-5. In November, 2004, when the applicant came to know of the infringement of its registered trade mark, it filed a Civil Suit (OS) No. 1285 of 2004 for permanent injunction against the respondent wherein the respondent has raised the defence under Clause (e) of Sub-section (2) of Section 30 of the Act and in view of the present rectification application, the application for stay has been withdrawn by the applicant from the High Court of Delhi with liberty to file afresh after the present application is decided. In view of the said defence raised by the respondent, the applicant has filed the present ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the condonation of delay. The miscellaneous petition and the part heard application came up for hearing on 12th October, 2007 when the learned Counsel for both sides appeared and argued on the application and miscellaneous petition together. 6. Learned Counsel for the applicant submitted that the applicant is the registered proprietor of the trade mark as of 3.2.1997; on 2.4.1997 obtained licence to manufacture the medicines under the trade mark DROTIN for the basic drug known as ISI-Dyhydro ethaverine chloride and thereafter manufactured and made the vendible goods available in the market in May, 1997. The applicants have incurred considerable amount of expenses on sales promotion of their product DROTIN during the past years. He further submitted that the respondent has obtained registration of DROT subsequent to the use and registration of trade mark DROTIN of the applicant, and such a registration has wrongly been made and is wrongly remaining on the register without sufficient cause. The registration of the impugned mark in the name of the respondent is an impediment in the business of the applicant and has afforded defence under Clause (e) of Sub-section (2) of Sectio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ugned mark on the part of the respondent up to the date of application is of no consequence on account of the admissions made by the respondent in paragraph 2 of the counter-statement and due to the fact that such statement is in bad faith and in violation of the common law as well as statutory rights of the applicant in the trade mark DROTIN. Relying upon the decision of the Division Bench of Calcutta High Court in Chandra Bhan Agarwal and Anr. v. Arjundas Agarwal and Ors. , learned Counsel contended that the impugned trade mark was devoid of any distinctive character and continues to be so at the time of filing the present application as the descriptive words have never been recognised as appropriate for use as trade marks. 8. Learned Counsel submitted that the applicant is prior adopter and user of the mark and also obtained registration of the trade mark as of 3.2.1997 and the respondent is subsequent in adopting the impugned trade mark. The adoption of the mark, which is deceptively similar to the earlier registered mark DROTIN, is dishonest, malafide and tainted and such adoption and registration has been made and obtained with a view to take advantage of the goodwill and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... scriptive and indicative of composition. He further submitted that the trade mark to which the applicant claims right to proprietorship and exclusive use is wholly derived from the basic drug DROTAVERINE. By placing reliance upon the decisions in Panacea Biotec Ltd. v. Recon Ltd. 1996 PTC (16) 561 and Khandelwal Laboratories Ltd. v. FDC Limited 2001 PTC 864 (Del), the learned Counsel submitted that it is the settled law that trade marks wholly derived from the basic drugs by deleting few letters is descriptive and indicative of composition and as such no exclusive right to use or proprietorship thereon can be claimed as has been claimed by the applicant. He submitted that the applicant having no right to exclusive use or proprietorship on its trade mark which is wholly derived from the basic drug 'Drotaverine' by deleting few letters, descriptive and indicative of composition has no valid ground under the law or equity to seek removal of respondent's trade mark from the register. 12. Learned Counsel made a submission that the trade mark DROT is in continuous use all over India since 24.5.2002 for which application for registration was made on 5.6.2002 and the mark wa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ted to be exchanged between the lawyer at Chennai and Lawmarks Naveen Saturn, New Delhi appear to be fabricated as they do not seem to be copies of e-mail. By producing an e-mail copy before us he contended that there is lot of characteristic difference between the copy of e-mail he has produced and copies of e-mail annexed to the petition. The second objection of the learned Counsel was that there are certain documents included in the evidence for which there is no mention in the rejoinder and that the affidavit is not verified by the authorised person. On clarification having given by the learned Counsel for the applicant, the learned Counsel for the respondent was satisfied and he did not press for the objections. 15. The learned Counsel for applicant while replying to the submissions made by the learned Counsel for the respondent vehemently denying that the applicant's mark is derived from the basic drug submitted that the same has not been derived from the basic drug DROTAVERINE as alleged by the respondent's counsel but is a coined word and its acquired distinctiveness stands proved in view of the averments made by Shri K.C. Paul in his affidavit. In support of h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion of register by expunging trade mark of whisky was filed Scotch Whisky Association along with member who was prejudicially affected by registration of trade mark, the application was maintainable. The Court emphasised that the words 'person aggrieved' occurring in Section 56(2) of the Trade and Merchandise Marks Act, 1958 however widely interpreted cannot dislodge the need for a direct link between the person and the grievance. In the case of Ciba Ltd. (supra), the Court observed thus: The phrase any person aggrieved has been liberally construed so as to hold the persons aggrieved all those who are in some way or other substantially interested in having the trade mark removed where it is a question of removal from the register, or persons who would be substantially damaged if the trade mark remained. In view of this definition it will be difficult to conceive of a person more aggrieved than the appellants because the appellants' case is that the product of the respondents is likely to be sold as the product of the appellants...'. 17. By applying the above propositions of law, the applicant is a person aggrieved as the applicant and the respondent are in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... something else, a surplus or a sufficient capricious, which is not inherently distinctive or capable of distinguishing. Descriptive words are not qualified to be registered unless they have acquired distinctiveness by use and trade evidence or acquired a secondary meaning before registration. The Division Bench of Calcutta High Court in Chandra Bhan's case (supra), while allowing the appeal and setting aside the judgment and order of the Single Judge dismissing the application for rectification has held as under: 17. Apart from the conditions referred to in Section 9, the Courts have uniformly and consistently imposed further condition before a trade mark is granted registration. No trade shall be allowed to be registered which may hamper or embarrass the traders or the trade now or in future in which this proposed to be registered. Lord Parker in the case of Registrar of Trade Marks v. W. C. Due Cross Ltd. (1913) 30 RPC 660 lays down that the Registrar is not bound to all registration even if the mark were in fact distinctive. He observed: The applicant for registration in effect says 'I intend to use this mark as a trade mark i.e. for the purpose of distinguishing ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... registered in our name in respect of the medicinal and pharmaceutical preparations is derived from first four letters of the basic drug Drotaverine Hydrochloride and, is descriptive and indicative of composition. In view the statement of admission we are hardly required to decide the issue of distinctiveness of the mark of the respondent. The statement of Shri K.C. Paul in para 4 of his affidavit that the word DROT has no direct or indirect reference to the character or quality of goods and is not descriptive of the goods is not admissible as the same is out side the contents of the counter-statement. The admission of the respondent is in our view true as nothing contrary to that has been shown or withdrawn by the respondent. Our above view gets support from the decision in Nathoo Lal's case (supra), wherein the Supreme Court has held that what is admitted by a party to be true must be presumed to be true unless the contrary is shown. Further, the same Court in Narayan Bhagwantrao Gosavi Balajiwal's case (supra) has held that an admission is the best evidence that an opposing party can rely upon, and though not conclusive, is decisive of the matter, unless successfully wi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d by the respondent cannot be given. However, we do not agree with the averment of the applicant that the provisions of Section 32 of the Act have no applicability to the facts and circumstances of the case. We are of the view that by virtue of provisions of Section 159(3) of the Act, for the simple reason that the mark DROT has been registered and the application made under the Act, the provisions of Section 32 is applicable, though as we have said earlier that the protection of registration is not available due to non-acquisition of distinctiveness of the mark. On the other hand, though the applicant is not required to prove the validity of registration of DROTIN, yet the learned Counsel for applicant has while vehemently denying that the mark is derived from the basic drug submitted that the applicant's mark is a coined mark. The basic drug shown in the drug licence is ISI-Dyhydro ethaverine chloride. It cannot be said that an ordinary person or even a medical man will construe that this mark is derived from the basic drug. The mark is neither a dictionary word nor a generic word. We do not see any reason to reject such a submission. We are of the view that the impugned regi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... shmandhara' was likely to deceive or cause confusion. It was further held that the overall similarity of the composite words 'Amritdhara' and 'Lakshmandhara' had to be considered having regard to the circumstance that that the goods bearing the two names are medicinal preparation of the same description. After considering various authorities cited before the Supreme Court, the Court has held as under (supra): (9) We agree that the use of the word, 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words having regard to the circumstance that that the goods bearing the two names are medicinal preparation of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, fools or idiots , may be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names and having regard to nature of the medicine he is looking for wit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ant's mark DICMOL is identical and deceptively similarity to plaintiff's mark DICLOMOL and the Court held thus: There is not much emphasis on this syllable in pronunciation. They have thus overall structural and phonetic similarity and therefore, likely to cause confusion and deception to a man of average intelligence and of imperfect recollection, the medical product being used for alleviation of various ailments, will be purchased mostly by people in villages and towns, literate as well as illiterate. 22. By applying the principles of comparison of two marks, DROTIN and DROT with four letters common and overall they closely resemble, visually and structurally, except that both are pronounced differently. The goods for which registration have been obtained are similar and falling under the same class. The purchasers are common, that is to say persons belonging to all classes of the society, and the trade channels also are same in both the cases. Though the respondent's medicinal preparations are Scheduled drugs to be sold only on doctors prescription but the Courts have made observations that availability of such drugs over the counter can not be ruled out. The ph ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... filed do not show that it has agencies all over India for sale of DROTIN range of goods as all the invoices pertain to Delhi, Haryana and Punjab areas. Therefore, the allegation that the impugned registration is in violation of provisions of Section 11(2)(a) of the Act fails. 23. Though the averment about violation of provisions of Section 18 of the Act has been made in the application, but the learned Counsel for the applicant has not advanced his arguments in this regard. 24. Now, we would consider the miscellaneous petition for condonation of delay in filing the reply to counter-statement. Before we discuss the averments of applicant and submissions of learned Counsel for the parties, it may be worthwhile to quote the following principle laid by the Apex Court in the case of Ramnath Sao @ Ramnath Sahu and Ors. v. Goverdhan Sao and Ors. : 11. Thus it becomes plain that the expression sufficient cause within the meaning of Section 5 of the Act or Order 22 Rule 9 of the Code or any other similar provision should receive a liberal construction so as to advance substantial justice when no negligence or inaction or want of bona fide is imputable to a party. In a particular ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
