(No.132/2011)
Prabha Sridevan, Chairman:
1. The applicants are the proprietors of the Trademark SATMOLA in classes 5 and 30 for Ayurvedic medicines. It is an old and established business as manufacturers and merchants of ayurvedic medicinal preparations. The applicants predecessor was one Shiv Shankar Ghore wala who had adopted and used the trademark SATMOLA in the year 1983 and assigned it to the applicants by an assignment deed dated 196.2001. Since then the applicants have been using the mark openly continuously and extensively. The applicants have also filed various applications for registration of their mark SATMOLA in various classes. The applicants label/pouch has a device of a boy and a girl, a combination of yellow and red colour and other distinctive features it is registered under the Copyright act.
2. The impugned mark is a dishonest adoption of the applicants trademark. It is not distinctive. The applicant is the prior user. The user claimed since 1996 is wrong. It must be expunged.
3. In the counter the respondent raised the objection that the applicant was not a person aggrieved. Further it was contended that the mark SATMOLA is totally different from the respondents SIDHMOLA. There was no opposition and therefore now they cannot file an application for rectification. The respondent has used it since 1996. There are no grounds for rectification.
4. A reply was filed and the evidence in support of their case was also produced.
5. The respondent filed M.P.No.186/2010 on the ground that since leave was not obtained under Section 124 of the Trade Marks Act, 1999 the petition was not maintainable. We have recently held in M.P.No.200/2008 in ORA/147/2008/TM/DEL that leave under Section.124 is not required by law. There fore this M.P. is dismissed.
6. This is not the only M.P. that has been filed by the respondent.
1) M.P.No.73/2005 was filed for a direction not to take up the evidence that was filed by the applicant. This was dismissed by this Board on 2/6/2006
2) M.P.No.72/2006 was filed seeking leave to file reply to the counterstatement. This was dismissed on 15/12/2006.
3) Diary No.2372/2008 filed to defer the present proceedings till the disposal of the suit was dismissed on 12.12.2008.
4) R.P.No.1/2007 was filed to review the order of dismissal in M.P.No.72/2006. This was dismissed on 16.06.2008.
5) M.P.No.4/2009 was filed for dismissal of the main application for rectification under section 124 of the Trade Marks Act, 1999 which was dismissed on 22.05.2009.
6) M.P.No.159/2009 filed for taking on record the written statement and replication in C.S.No.524/2004 before the Additional District Court.
7) M.P.No.190/2009 filed for amending the counter-statement. Both the applications were dismissed on 15.01.2010 as these applications were filed only because of the observations made in M.P.No.4/2009.
7. Now the main matter was taken up by us and we heard the counsel for the applicant and the respondent and also perused the evidence.
8. The learned counsel for the Applicant submitted that the offending trademark was clearly intended to be similar to the applicants. The leaned counsel submitted that in the civil suit before the City Civil court Delhi in Suit No. 524/2004 the Court had granted injunction against the respondent restraining the respondent from selling SIDHMOLA in the wrapper/label//pouch as it is likely to deceive/confuse the unwary customer. However no injunction was granted against the use of trade name SIDHMOLA. He submitted that while the applicant has appealed against this order, the respondents s have not appealed against the injunction granted. The learned counsel submitted that the depiction of the boy and girl on the respondents product and the use of the same colour combination was evidence of the intention to deceive.
9. The learned counsel submitted that the evidence produced would show that the applicants goods are known all over, including Meerut where the respondent is based and therefore the respondent cannot plead that he did not know of the applicants mark and get-up. The learned counsel submitted that the SATMOLA tablets and SIDHMOLA tablets are identical goods; in fact the ingredients are the same. According to him it is only because the respondent did not have the drug licence that they were forced to register their goods under class 7.
10. The learned counsel submitted that though what was registered by the respondent was a âword markâ, the wrapper used by them would show the intention to deceive. The learned counsel produced evidence to show how widely advertised the applicants goods were. They had advertised on Mumbai local trains, on Kolkata buses, in news paper having wide circulation like Dainik Bhaskar and also on TV. The learned counsel submitted the applicants mark was also registered under the Copyrights act. He relied on 2005 (30) PTC IPAB 212 Prestige Housewares India Limited vs. Registrar of Trade Marks and another.
11. The learned counsel for the respondent submitted that the word Mola is common in the trade. He submitted that Hajmola had filed 3 different suits against Satmola, Sidhmola and Chatmola , and all were compromised. So the position is the two marks can coexist. When there are marks which contain two parts the court must ignore the part that is identical and see if the uncommon part is distinct. He submitted that the uncommon part is also the first syllable which is the stressed syllable. He submitted that Sat and Sidh are so different that there is no likelihood of confusion.
12. The following decisions were relied on by the learned counsel for the respondent:
1) 1982 PTC 335 (F. Hoffman la Roche and Co Ltd V. Geoffrey Manners and CoL Ltd.) In this the question was whether PROTOVIT was similar to DROPOVIT. The Supreme Court held there was no real danger. but the learned counsel wanted to urge that in that case the uncommon element in both the words Proto and Dropo, were so dissimilar as in âSat and âSidh. So that decision applied to this case.
2) Griffon Laboratories (P) Ltd v. Indian National Drug Co Ltd (Suit No 399 of 1985. Order dated 18th Sept 1987) In this case âSorbiline and âSorbitone were held not to be deceptively similar. The learned counsel submitted that this applied to this case.
3) In 1997 PTC (17) (DB) SBL Ltd., vs. Himalaya Drug Co., it was held that:
â25. To sum up:
(1) The crucial tests to be applied for judging an infringement action or a passing off action in the field of medicinal and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparations trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are :
(i) the manner in which the trade is carried on, such as sales being made only by authorised or licensed vendors who will be educated, also having special knowledge of medicines and pharmacy;
(ii) the class of persons who would be the purchasers, whether they would be accompanied by doctors' prescription and would in all probability remain in touch with doctor while consuming the medicine purchased.
The court would ask - Is there such a similarity between the two trade marks that a doctor or a chemist or the both by some carelessness in expression, some obscurity in handwriting, some slip of recollection or some careless mistake not expected of a trained professional like doctor or chemist might lead to the one being confused for the other Regard shall be had not to the hypothetical possibilities but to ordinary practical business probabilities as applied to the circumstances of an individual case.
(2) The decision on the question of likelihood of deception is to be left to the court.
(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark.
(4) Whether such feature is public juris or geris is a question of fact.
(5) If the two trade marks by two competing traders use a generic word or an expression public juris common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is what would remain in the memory or customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc., used on the packing also assume significance.â
4) JT 1994 (5) S.C. 37 J.R.Kapoor vs. M/s Micronix India - In this case the Trade names MICROTEL and MICRONIX were held to be not deceptive and do not misguide the buyers.
5) 2009 (41) PTC 614 (DEL) Dabur India Ltd., Alka Ayurvedic Pvt. Ltd. This was heavily relied on by the learned counsel for the respondent. Here the proprietor of Hajmola wanted to restrain the proprietor of Pachmola from using the trademark. It was he3ld that the colour scheme, caricature and shape of sachet of the two were different as also the trade dress/packaging. This was relied on to show that it was held that the distinctiveness of the common letters âMOLAâ had been blunted by Hajmola allowing such marks as Satmola, Sidhmola, Chatmola and Swadmola.
13. The learned counsel for the appellant relied on 2005 (30) PTC (IPAB) where it was held that PRESTIGE and PRE/STAGE were deceptively similar, and submitted that SATMOLA and SIDHMOLA were also similar and that PRESTIGE was the prior in use. A passage from P. Narayanan was also referred to.
14. We have considered the submissions made by the counsel and the facts of the case and the law applicable. The words are SATMOLA and SIDHMOLA. The uncommon part in each of the marks are âSatâ and âSidhâ. Both start with the âSâ sound, the dental consonant âtâ and âdhâ do not sound very different when they are followed by the consonant âmâ. There is no doubt that SATMOLA and SIDHMOLA when pronounced by the ordinary man are strikingly similar. The decisions on Protovit and Dropovit, or Microtel and Micronix, Sorbiline and Sorbitol have no application since the dissimilarities are really clear in the above pairs of words. Moreover, though they are said to produce curative effects they are sold across the counter and not on prescription. So the decisions where prescription drugs are the goods in question, may not be applicable. The ingredients are the same in âSATMOLAâ and âSIDHMOLAâ as is seen from the materials produced in the paper-book. The averments relating to identical colour scheme viz., red and yellow, and the images of a boy and a girl are not specifically denied in the counter statement. It is no answer to say that what the respondent have registered is the word mark and the Board must only look at the word. The words are deceptively similar. The intention to deceive is reinforced from the use of the wrapper. The wide publicity effected by the appellant and the volume of sales of the appellants product are established by the evidence Exhibits/annexure at pages 118, 119, 121-123 of the documents filed along with the reply to the counter-statement. The appellant is clearly the prior user. The fact that in the Hajmola case the court held that the distinctiveness of the word MOLA has been diluted will not help the respondent in this case where if we take the word as a whole we find SATMOLA and SIDHMOLA are deceptively similar and so are the uncommon parts of the word in conjunction with the common word Mola.
15. For all these reasons we allow the rectification application. The respondent to pay costs of Rs.10,000/- (Rupees ten thousand only) to the applicant for filing number of miscellaneous petitions. The Registrar of Trade Marks is directed to remove the trade mark âSIDHMOLAâ registered under No.948623 in Class 30 from the Register of Trade Marks. M.P.No.186/2010 has become infructuous as the main rectification application has been disposed of.