Pharma Gmbh Vs. the Joint Registrar Trade Marks and Others - Court Judgment

(CIRCUIT BENCH SITTING AT KOLKATA)

ORDER No. (97/2012)

V. RAVI, TECHNICAL MEMBER:

1. This appeal arises out of the order of refusal by the Senior Examiner of Trade Marks refusing the Application No. 1554913 in class 5. The said trade mark was refused at the pre-advertisement stage itself. The mark in question is ‘1A-Pharma. Being aggrieved, the matter was carried in appeal and the counsel for the appellant submitted detailed arguments why the impugned order of the Senior Examiner of trade mark is perverse, and bad both in law and facts, and it suffers from bais and is contrary to the principle of natural justice.

2. The facts of this case briefly is as follow:-

On 3^rd May, 2007, the appellant company 1 A Pharma – GMGH, Germany filed an application for the registration of the trade mark “1(A) – Pharma ” in Class 5 in respect of pharmaceutical, veterinary and sanitary preparations as also other goods falling in the said class. The mark on the date of filing was ‘proposed to be used'. The examination report issued had raised objection on relative grounds under Section 11. The applicant responded to the examination report but the objection was nevertheless maintained and a hearing was offered. Thereafter, the application was refused by the Senior Examiner of trade marks. Being dissatisfied with the grounds for refusal issued in Rule 40(1) of the Trade Marks Rules, 2002, the impugned order has been challenged before us. The reasoning given by the Senior Examiner for refusal is that the word “1A-Pharma” is a combination of two words “1A” and “Pharma” which has no difference from the expression “A1 –Pharma” which is the same as “A one Pharma”. The hearing officer further made reference to the Random House dictionary amplifying the meaning of the work “A one” described as “first class, excellent, superior, etc” and the word “Pharma” being an abbreviation of “pharmaceutical pharmology and pharmaceutical company”. According to him, both the expression of “A one pharma “ and “1A-Pharma” are one and the same and therefore, the mark applied for was purely, descriptive of the character and quality of the goods and objectionable under Section 9(1)(b ) of the Act. The hearing officer then goes on to cite a passage from Dr. S. Venkateswaras book on Trade Marks and Passing Off from page 92 and infers that the mark applied for is per se and inherently unregistrable. He, further observes that there is no doubt in his mind that the word “1A - Pharma” is an ordinary dictionary word which is apt for normal description of goods and does not qualify for registration under Section 9 of the Act and should not be allowed to be monopolised by any one. He further reasons that the impugned mark “1A-Pharma” would definitely interfere with the legitimate rights of the other traders to the bona fide use of the word 1A-Pharma in relation to the relevant goods. Therefore, according to him it is not in public interest to permit the registration of this word as a trade mark giving exclusive right to the applicant in respect to the goods applied for. The hearing officer thereafter exercised his discretion under Section 18(4) against the applicant on the reasoning that the mark applied for will interfere with the legitimate right of the public and other traders. The hearing officer specifically commented “For this goods, particularly, the objection under Section 9 was not raised earlier, which was an error”. On these ground, the impugned mark was refused by the Senior Examiner by his order dated 18.08.2008.

3. We have heard the detailed arguments of the Learned Counsel for the appellant and gone through the records of the case.

4. The Learned Counsel for the appellant relied on a decision of the Kolkata High Court in “Prem N. Mayor and Others versus Registrar of Trade Marks and others” and drew our attention to the observation of Justice P.B. Mukharji in para 9 that”

“A mark should therefore be considered as a whole on its total impression and as a general rule attempts to dissect a mark in order to destroy distinctiveness have been disapproved in such cases as Re, hawthorn and Co., Ltd. (1934) 52 RPC 15 and Re, William Bailey (Birmingham) Ltd. Re., Gilbert and Co. (1935) 52 RPC 136.. In fact, the general principle of trade mark law in determining the question of identity of deceptive similarity is that the marks, names or get-up concerned must always be considered as a wholeas the true test. See the observation of the Supreme Court hi Corn Products Refining Co. v. Shangris Food Products MANU/SC/0115/1959 : [1960] ISCR 968 where it says “It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole”. It is the totality of the impression, phonetically and visually, which is the test. If that totality of impression is likely to cause deception or confusion, then the identity is established. If not, then they are dissimilar.

5. The only issue for determination is whether the reasoning that ‘1A-Pharma and A1-Pharma means one and the same thing and convey the same meaning is correct. Clearly, the Senior Examiner has erred in this and come to a totally wrong conclusion. The expression ‘1A is an alpha numeral combination and the only thing that it readily reminds one of the seat number in a plane or train journey. It is devoid of any meaning as such and can be regarded to purely fanciful and arbitrary, numeral/letter combination and is proof enough of an IP creation in adopting and coining a random alpha – numeral combination to depict the trade mark of the applicant. The hearing officer has totally misapplied the law in attributing a meaning to 1A and inversing it to read as A1 and then taken a stand that it has highly descriptive meaning. Such a process of reasoning is irrational, defies logic and completely misconceived. The passage of Dr. Venkateshwaran quoted by the Learned Senior Examiner is sound law but has been mis-applied to the instant case. In our view a combination word like ‘1A-Pharma is a lexical invention bestowing distinctive power on the mark so formed and qualifies for registration. The impugned mark would trigger in the mind of the relevant public origin specific source and the mark applied for is sufficiently striking to function as an indication of trade origin. The inference that the mark applied for is barred under section 9 is unwarranted. No other trader or manufacturer would reasonably require the expression ‘1A-Pharma for use as a trade mark for the relevant goods. The well – settled principle is the mark is to be assessed as a whole having regard to the realities of the market place. The end user who will be dealing with the impugned mark are most unlikely to read meaning between the line when used under normal and fair trading conditions. The impugned mark is syntactically unusually juxtaposed and is not a familiar expression in English language. The combination work ‘1A-Pharma cannot be regarded as a wholly descriptive although the addition of the suffix ‘Pharma is suggestive of the goods to which the mark relates. Law does not condemn adoption and use of suggestive expression and under the Act, the trade mark needs only ‘capacity to distinguish the goods. The assessment whether a trade mark is distinctive or not is a complex exercise which involves a combination of objective and subjective elements. The impugned mark is not applied for mass consumption products. Sale of pharmaceutical goods are regulated by other laws and intermediaries as also and user are unlikely to be influenced by any subliminal message, if any, contained in the mark. We have taken into account the presumed expectation of the average consumer who are reasonably well informed, reasonably observant and circumspect. The conclusion of the Senior Examiner that the impugned mark ‘1A Pharma does not qualify for registration is erroneous. We therefore, set aside the order dated 18.08.2008 and direct the impugned trade mark to be published in the forthcoming trade marks journal within two months hereof and the matter dealt with further in accordance with law.