(Circuit Bench at Ahmedabad)
Honble Syed Obaidur Rahaman, Technical Member:
This is an application for removal of trade mark from the Register or rectification of the Register under section 45, 57 and 125 of the Trade Marks Act, 1999. The trade mark âDOLAREN under No.810263 in class 5 registered in the name of M/s Nabros Pharma Private Limited. The entry in the Register in respect of the above mentioned trade mark may be removed or cancelled.
2. The facts of the case is that the applicant is engaged in the business of manufacturing and selling of medicinal and pharmaceutical preparations for more than two decades. In the year 1980 the applicant adopted a fanciful and inherently distinctive trade mark consisting of the work âDOLAR in respect of the aforesaid goods and after obtaining necessary drug licence from competent drug authorities, started using the said trade mark âDOLAR in respect of cough syrup in the year 1981. The trade mark âDOLAR in respect of medicinal preparations, by virtue of long, continuous, extensive and exclusive user of the last more than twenty five years , has become distinctive and the same is also associated exclusively with the name of the applicants. The applicant is the registered proprietor of the trade mark âDOLAR under No.439950 in class 5 in respect of medicinal preparations. The said trade mark is valid, subsisting and in force till date. The applicant claims himself to be the sole and exclusive proprietor of the trade mark âDOLAR in respect of the medicinal preparations under the common law by virtue of prior, long, extensive, exclusive and uninterrupted user and under the statute by the virtue of registration. The medicinal preparations of the applicant under the trade mark âDOLAR are very popular amongst the doctors, patients and medical fraternity at large by virtue of the exact composition, quality and effective control regarding the treatment of related ailments and as such, the trade mark has earned a unique goodwill and reputation associated exclusively with the name of the applicants.
3. It is the case of the applicant that the goods of the applicant under the trade mark âDOLAR have been sold practically throughout the Republic of India. The sale of the applicants aforesaid goods under the trade mark âDOLAR are very extensive and runs in to several lakhs of rupees. The applicant is carrying on extensive sales promotion of its trade mark âDOLAR through various dealers schemes, discount schemes, free samples schemes etc. and a huge amount has been spent on the sales promotion by the applicant. Due to excellent quality of the medicines sold by the applicants goods under its trade mark âDOLLAR coupled with its aforesaid extensive sales promotion, the trade mark âDOLAR has become a very reputed mark and is associated exclusively with the name of the applicant. By virtue of the continuous and extensive user coupled with huge advertisement and publicity campaigns, the trade mark âDOLAR of the applicant in respect of its aforesaid goods has become a âwell-known mark and has earned a commanding reputation and goodwill in the pharmaceutical industry on a national scale. The use of the trade mark âDOLAR and/or any other similar/deceptively similar trade mark in respect of medicinal preparations is bound to cause confusion and deception amongst the doctors, patients and medical fraternity as the same shall amount to unfair trade practice, dilution and infringement of the applicants proprietary rights with respect to its prior, registered and established trade mark âDOLAR.
4. The respondent/registered proprietor claims himself to be the manufacturer and merchants of medicinal and pharmaceutical preparations and has obtained registration in respect of trade mark âDOLAREN in respect of identical/similar goods under no.810263 in class 5 dated 15.07.1998, the subject matter of the present rectification. The respondent/registered proprietor has suppressed materials and relevant facts from the Registrar of Trade Marks and by making false claim of proprietorship obtained the registration of the impugned mark. The respondents concealed the fact that the Applicant is the prior user and registered proprietor of the trade mark âDOLAR for the last 25 years in respect of the identical goods. The impugned trade mark âDOLAREN fraudulently adopted by the respondents is similar/deceptively similar to the prior adopted and used, reputed, registered and established trade mark âDOLAR of the applicant. Further the goods involved herein are also identical i.e. medicinal preparations likely to be sold in the same shop, over the same counter, to the same class of purchaser. Therefore, on seeing/buying the goods of the respondent branded under their registered trade mark âDOLAREN, the purchasing public would assume as if the impugned goods of the respondents are also coming from the applicants manufacture and/or that the respondent is a sister concern/branch of the applicants firm, thus, there is every likelihood of confusion and deception amongst the trade channels as well as the purchasing public. Therefore, the continuity of the registration of the impugned mark is hit by provisions of section 9 and 11 of the Act. The registered trade mark is not distinctive of the registered proprietors goods. As the impugned mark of the respondent is similar/deceptively similar, to the prior adopted, prior used, registered and established trade mark âDOLAR of the applicant in respect of identical goods, therefore, the same is not capable of distinguishing its goods from those of the applicants. Thus the impugned mark was not distinctive or capable of being distinctive as on the date of its registration. Thus, the continuity of the registration of the impugned mark is hit by the provisions of section 9 of the Act. If the registration of the impugned mark âDOLAREN under the aforesaid number is allowed to be continued in the name of the registered proprietor in the Register, the same shall lead and facilitate passing of the goods of the registered proprietor as the goods of the applicant. The registered proprietor has no justification for the adoption of the impugned mark âDOLARNEN. The registered proprietor has adopted and fraudulently got the trade mark âDOLAREN registered with ulterior motives and dishonest intentions to trade upon the established goodwill and reputation of the applicants prior adopted and prior used proprietary mark âDOLAR and to earn undue profits in an illegal manner. The respondents are not the actual and lawful owners and proprietors of their impugned mark âDOLAREN under section 18 of the Act. Thus the respondents concealed the relevant facts before the Registrar of Trade Marks and on the basis of false representation, obtained the registration of the impugned mark. The impugned mark is of such nature that it is bound to cause confusion and deception among the purchasing public and hence the impugned mark ought to be rectified by the Registrar. The registration of the impugned mark was made in the contravention of the provisions of the Trade Marks Act and in particular the provisions contained in section 9, 11 and 18 of the Act and even today the impugned mark continues to be in contravention of the provisions of the Trade Marks Act, 1999 and particularly the provisions contained in sections 9, 11 and 18 of the Act. The continuation of the registered trade mark âDOLAREN under No.810263 in Class 5 in the name of the registered proprietor would affect the purity of the Register. The entry relating to the impugned mark was made in the Register without sufficient cause. The entry relating to the impugned mark wrongly remains on the Register. The impugned mark is otherwise disentitled for protection in court of law. In his discretion, the learned Registrar ought not to have registered the impugned mark in the name of the registered proprietor. The applicant is an aggrieved person within the meaning of the present proceedings as the rights of the applicant with respect to its prior adopted and prior used mark âDOLAR are being adversely affected by the registration and continuation of the impugned mark in the Register as both the applicant as well as the respondents are in the same trade and further the respondents have started manufacturing and selling medicinal preparations under the impugned mark âDOLAREN. Further, the respondents on the basis of their trade mark âDOLAREN have filed a civil suit for permanent injunction against the applicants at the District Courts, Ahmedabad. Thus in view of the aforesaid reasons, the applicants are the âaggrieved persons and have a locus standie to file and institute the present proceedings for cancellation/removal of the registered trade mark âDOLAREN in the name of the registered proprietor under the aforesaid number. The balance of convenience also lies in favour of the applicant and against the respondents. That the respondents have filed a civil suit against the applicant at City Civil Courts, Ahmedabad, on the basis of their aforesaid registered trade mark âDOLAREN. It is, therefore, prayed that the impugned trade mark âDOLAREN under No. 810263 in Class 5 in the name of the registered proprietor be rectified/removed/cancelled.
5. In the counter statement filed by the respondent it is stated that the respondent is a private limited company incorporated under the Companies Act, 1956 and the respondent is originally incorporated in the year 1983 in the name of Nabros Pharma Limited, thereafter having passed the necessary resolutions on 14.12.2004 to effect the change of name ot Nabros Pharma Pvt. Ltd. The respondent company is engaged in the business of manufacturing, marketing, selling and exporting, medicinal and pharmaceutical preparations. The product of the respondent is in the form of the tablet under the trade mark with the artistic work in its copyright. The respondent coined the trademark âDOLAREN and the copyright in the label of the medicines sold under the trademark âDOLAREN in the year 1998. The said medicine under the trade mark âDOLAREN is an anti-inflammatory medicine. The product of the respondent has become very famous and has acquired the tremendous reputation amongst the public for its excellent quality and in consequences thereof a very valuable goodwill accumulated therein. To distinguish its product from the products of other manufacturers, the respondents have adopted and using the trade mark âDOLAREN and also the copyright consisting in its artwork i.e. particular style, get-up, layout, design of that of the hand of a man covered with a glove knocks but and to show the pain disappears with the design of zig zag and at the bottom of the packages of the respondent, the trade mark âDOLAREN has been written and under it there has been a note write as KNOCKS OUT PAIN, INFLAMATION AND FEVER the manner of writing the trade mark âDOLAREN on each packages both in English and Russian language on the packages of the respondent is being continuously used by the respondent since year 1998 in respect of medicinal and pharmaceutical preparations uninterruptedly, continuously, extensively and openly in many countries. The respondent is the sole proprietor and enjoying the exclusive rights to use the said trade mark DOLAREN and the copyright subsists in the artwork of its label and on the packages under the provisions of the Trade Marks Act, 1999 and the Copyright Act, 1957.Because of the good quality and an attractive trade mark âDOLAREN along with the copyright in the art work of its label and on packages in respect of the said goods viz., tablet used in pain, inflammation and fever, which is catchy and being used by the respondent since long, has captured very good mark. The respondent submits that because of field activity, quality products, wide network of the depot, dealers and stockiest and by spending very huge amount and efforts in advertising, the respondent company have been in a position to make known its products amongst the consumers, dealers and to the general public under the said trade mark âDOLAREN along with the Copyright in the artwork if its label and on packages which has become prominent part of this field. The trade mark âDOLAREN has been coined by the respondent and has been in continuous use since the year 1998. Therefore, the question of unfair trade practice, dilution and infringement of the appellants property rights from the appellants trademark âDOLAR does not arise. The respondent is a renowned manufacturer of pharmaceutical products. The details of export sales effected by the respondent are given below: -
Financial year Export Turnover
199601997 3,17,65,560.00
1997-1998 12,41,45,964.00
1998-1999 7,98,56,552.00
1999-2000 8,54,39,505.00
2000-2001 17,98,27,181.00
2001-2002 10,90,54,902.00
2002-2003 13,30,67,385.00
2003-2004 4,59,52,009.00
2004-2005 9,46,36,707.00
2005.2006 28,56,24,330.00
6. The present respondent has filed a civil suit for permanent injunction for infringement of registered trademark and copyright before the City Civil Court at Ahmedabad being Suit No.1735 of 2006 against the present appellant. The respondent submits that both the marks âBOLAREN of the present appellant and âDOLAREN of the present respondent are similar and on that basis the Honble Court of Ahmedabad has granted an injunction restraining the present appellant from the use of impugned trademark vide order dated 31.08.2006. The present suit is pending before the City Civil Court at Ahmedabad. The respondent submits that this rectification is counterblast of the present appellant against the present respondent and for that reason they have filed this frivolous rectification against the respondent before the Appellate Board.
7. The matter came up before the Circuit Bench at Ahmedabad on 21.02.2008. Learned counsel Shri R.K.Jain appeared on behalf of the applicant and Ms.Sejal R.Shah learned counsel appeared for the respondent.
8. The learned counsel for the appellant submitted that they are the prior user and their mark is registered 25 years back in the year 1980 and since then they are using the mark. The said trade mark has been duly renewed from time to time and the same is valid, subsisting on the Register of Trade Marks. The respondent has copied the applicants mark and duplicating his mark and by way of fraud the respondent obtained registration in the year 1998 after writing letter. By virtue of this registration they are filing suit for infringement against the original owner of the trade mark. The appellant are prior adopter and using in the field of pharmaceutical, medicinal preparations. So they have better right than the subsequent users. If you compare between the two marks, the latter mark is deceptively similar to the earlier mark. In view of this, within the meaning of section 56, 57 of the Trade Marks Act, 1999, the applicant is definitely an aggrieved person. So he is entitled to file this rectification application.
9. It is clear form the averment made in the counter statement by the respondent in para 7 the present respondent has filed a civil suit for permanent injunction for infringement of registered trade mark and copyright before the City Civil Court at Ahmedabad being suit No.1735 of 2006 against the present applicant. The respondent submits that both the marks âBOLAREN of the present appellant and âDOLAREN of the present respondent are similar. Both belong to same trade. The petitioner cited case law in 2007(34) PTC 731 (IPAB) Jain Doors Pvt. Ltd. Vs Suresh Kumar Jain wherein it was held as follows:
â18. We have carefully considered the arguments of both the counsel. The main issue which arises for consideration is whether the applicant is an aggrieved person? The applicant in this case is an aggrieved person for the reason that the respondent had taken criminal action against the applicant. As per section 56 of the Act for expunging or varying the entry wrongly made or remaining in the Register the locus standi would be ascertained liberally since it would not be against the interest of the person carrying on the same trade, but also in the interest of the public to have such wrongful entry removed. In the matter of Powells Trade Mark 1894 (11) RPC 4, the House of Lords has defined aggrieved person as âalthough they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct ,and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited , in as much as it is public mischief that there should remain upon the Register a mark which ought not to be there, and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expenses of litigation.
Wherever it can be shown, as here that the applicant is in the same trade as the person who has registered the trade mark and wherever the trade mark, if remaining on the Register would or might limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that, which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me he has a locus standi to be heard as person aggrieved.â
Thus when the rights of the applicant is being interfered by the respondent as the registered proprietor under the impugned mark, the applicant is construed to be aggrieved person. From the above we are of the opinion that the applicant is a person aggrieved.
The learned counsel further relied on the following judgements:
(i) 2004 (28) PTC 632 (Del) Syncom Formulations Vs SAS Pharmaceuticals
(ii) 1996 PTC (16) Ciba Geigy Ltd., Vs Crosslands Research Laboratories Ltd.,
(iii) 2003 (26) PTC 21 (Mad) USV Limited Vs IPCA Laboratories Limited
(iv) 2007 (35) PTC (Del) SSG Pharma PVt. Ltd., Vs Amar Nath
(v) 2002 (24) PTC 438 (Del) Vijay Grover Vs Biocure Laboratories and Anr.,
(vi) 1992-PTC-137 M.s Astra-IDL Limited Vs M.s TTK Pharma Limited
(vii) 2007 (35) PTC 915 (IPAB) Computer Sciences Corporation Vs R.Thangaraj
(viii) 1998 PTC (18) Charak Pharmaceuticals Vs Deepharma Ltd
(ix) 1994-PTC-183 Brook Bond India Limited Vs C.Patel and Co.,
(x) 2006 (33) PTC 499 (IPAB) Saroop Prakash Nayar Vs Chesebrough Ponds Inc
10. The counsel for respondent No.1 cited the order passed by the District and Sessions Judge, Delhi in Lark Laboratories Vs M/s Nabros Pvt. Ltd., the operative part of which is as follows:
âIt was a criminal case and in the background of the case the Honble High Court had appreciated the arguments that even in the goods of the accursed were meant for export purposes only then also their seizure was necessary. The application of the plaintiff is therefore dismissedâ.
His contention is that the applicant filed suit for injunction under Order 39 Rules 1 and 2 CPC filed by the plaintiff along with the suit wherein it has been prayed that the defendant be restrained from manufacturing, selling, offering for sale or otherwise dealing in medicinal and pharmaceutical preparations under the Trade Mark âDOLAREN and/or any other similar/deceptively similar trademark. Defendant be also restrained from passing off their goods as the goods of the plaintiff. After hearing the submissions of both the parties, the District and Sessions Judge, Delhi dismissed the plaintiffs application. He submits that the mark of the respondent is different from the appellants mark and so there is no question of confusion in the mark. Hence the rectification application shall be dismissed.
11. We have heard both parties and gone through the documents. It is an admitted fact that the registration was obtained by the applicant in the year 1980. So they are the prior adopter and user of the mark âDOLAR in respect of medicinal preparations. The respondent has copied the appellants mark and advertised his mark and encashing on the goodwill of the applicants mark which is existing in the market very long. The respondent obtained the registration of the mark by adding the letters âEN to the applicants mark âDOLLAR and using the same mark in the same field as medicinal preparation. Both the medicinal preparations are used in different use. So there is likelihood of confusion and deception amongst the trade channels and as well as the purchasing public. Also there is chance of adverse effect if the medicines use if confused by the user. So we are of the view that the registration of the impugned mark is hit by the provisions of section 9, 11 and 18 of the Act. Hence we are of the view that the mark was registered wrongly and the same cannot be allowed to continue in the Register of Trade Marks.
12. In view of the above, ORA 119/06/TM/AMD is allowed and the Registrar is directed to remove the mark âDOLAREN under No.810263 from the Register of Trade Marks. However, there will be no order as to costs.