Judgment:
Order No.121/2011
USHA, VICE CHAIRMAN:
1. The original rectification application is filed for a direction to the Registrar of Trade marks to rectify the Register of Trade Marks by expunging the registration of the trade mark âSanjeevi 777 Oilâ registered under No. 1167605 in class 5 under the provision of the Trade Marks Act 1999.(hereinafter referred to as the Act).
2. The applicants are using different trade marks namely, Psorolin, Keshraksha, Dano, including 777 Oil. They have applied for registration of the trade marks and have obtained registration for Psorolin, Dano and 777 Oil. One Dr. J.R. Krishnamoorthy promoted the applicant company, was formulated the Siddha medical oil for treatment of Psoriasis. He had developed the Siddha medicine in association with National Research Development Corporation (NRDC). The said oil has proved its effectiveness in the treatment of Psoriasis. The oil having been developed in association with NRDC, the NRDC has come to be vested with the know-how and the process of preparation of the said oil. The medicinal oil was named as â777 Oilâ by Dr.J.R. Krishnamoorthy. In acknowledgement of the contribution made by Dr.J.R. Krishnamoorhy in development of the process of manufacturing the Siddha Oil, NRDC has given exclusive license to manufacture and market the oil under the agreement dated 19.10.1990 for ten years and the same was renewed for further period of ten years.
3. The applicant adopted the trade marks 777 oil in respect of the said medicinal oil since August, 1992 and is continuously using the same without any interruption. The applicants have obtained registration of the trade mark â777 Oilâ under No. 1061418. The applicants are thus the registered proprietor of the trade mark and have exclusive right to use the trade mark â777 Oilâ. The sales turn over which was Rs. 3804952 in the year 2002-2003 increased to Rs. 7,633876 in the year 2007-2008.
4. In the year 2008, the applicant came to know of the 1st respondents use of the trade mark âSanjeevi 777 Oilâ and hence filed a Civil Suit in C.S No. 651 of 2008. Pending disposal of the Suit the applicant filed an application for interim injunction in O.A. No. 744 and748 of 2008 and obtained an order of injunction. The respondents herein filed their counter statement claiming to be the registered proprietor of the trade mark âSanjeevi 777 Oilâ under No.1167605 impugned herein in Class 5. In the counter statement they have claimed user since 1993 whereas in the application for registration the user claimed is of the year 1999.
5. The registered trade mark is devoid of any distinctive character nor it is capable of being distinguished of the respondents goods and, therefore the registration of the trade mark is prohibited under Section 9(1)(a) of the Act. The impugned trademark being similar to that of the applicants and that the applicants are prior users of the trade mark, the registration is in violation of section 9(2) (a) of the Act.
6. The rival marks and the goods being identical there is every possibility of confusion being caused among the public. The impugned trade mark is therefore in violation of the provisions of Section 11(1) and (3) of the Act. As per the provisions of Section 18(1) of the Act, the respondents cannot claim to be the proprietor of the trade mark and the trade mark ought to be cancelled.
7. The respondents use being neither honest nor concurrent they cannot have the benefit of Section 12 of the Act. The respondents have obtained registration by making false representation. The respondent being aware of the applicants use since 1997, the continuation of the respondents trade mark will affect the purity of the register. The impugned trade mark is wrongly remaining on the register without sufficient cause as the trade mark registration has been obtained by fraud and misrepresentation.
8. The impugned trade mark therefore be removed/cancelled from the register of trade marks.
9. The 1st respondent filed their counter statement stating that they adopted the trade mark âSANJEEVI 777 Oilâ in the year 1992 and started using the same in the year 1993. They had applied for drug license in the year 1992 and were granted the same in the year 1993 â license No.589. They had been using the same since 1993 continuously, openly and without any interruption. The trade channels, the class of customers and the business are one and the same. There has been an inordinate delay in taking action for rectification and on this ground alone the application for rectification has to be dismissed. The applicants association with NRDC has no relevance to the present proceedings. The agreements relied on by the applicants are contrary to the averments made in the application for rectification. The applicants claim of exclusive license from NRDC is falls and wrong.
10. The applicants have not produced any document to prove their user since 1992, nor their use as on date. The 1st respondent obtained registration prior to that of the applicants. The applicants have not given any details as to the knowledge of the 1st respondents registration.
11. The 1st respondents trade mark is âSANJEEV 777 Oilâ. The word SANJEEVI is written in a similar script as the words â777 Oilâ. The word âSANJEEVI is used as a prefix with the respondents other marks. The trade mark was coined by the 1st respondent as some of the ingredients are kept in direct sunlight for 7 days, other ingredients soaked in oil for 7 days before they are processed further and packed and the oil should be used for a minimum of 7 days for better results.
12. As regards different dates of use in the counter statement and the application for registration, the respondent had been using since 1993 as stated in the counter statement, whereas in the application there was mistake on the respondent as no proper information was given to the agent at the time filing the application for registration. The other grounds were denied. The 1st respondent also stated that both the applicant and the respondent had been using the trade mark continuously since 1993 and there has been no instance of confusion reported. The applicant is not the proprietor of the trade mark. The applicant has been licensed the right of the know how and processes to manufacture the product by NRDC. The applicant has admitted that they had been paying the royalty to NRDC. The respondents use since the year1993 has been continuous and therefore they are benefited by Section 12 of the Act. The application for rectification is, therefore, liable to be dismissed.
13. We have heard the Counsel for the applicant Shri Prabhakara Reddy and the counsel for the respondent Shri R. Satish Kumar.
14. Learned counsel for the applicant Mr. A. Prabhakara Reddy submitted that the applicants had been using the trade mark since 1992 which fact has not been denied by the 1st respondent. The counsel further submitted that Dr. J.R.Krisnamoorthy had developed the Siddha medicine in association with the National Research Development Corporation for the treatment of psoriasis. The NRDC has given extensive license to manufacture and market the said oil to the applicant company. In this regard, the counsel pointed out to the license agreement dated 19.11.1990. He further submitted that they obtained drug license as early as 1992 and the same is renewed upto date. While submitting this, the counsel drew our attention to the respondents documents and stated that the drug license filed by the respondents does not give any details as to the drugs for which the license has been granted. No proof of use has been filed so the benefit of honest and concurrent use does not arise.
15. The issue of acquiescence does not arise as no evidence of use prior to 2008 has been filed. The question of delay and latches not a defence in the case of rectification application. The registration is prohibited under Section 9 of the Act. As per Section 11 of the Act, goods being identical, there is every likelihood of confusion being caused. Marks are also identical.
16. The counsel further stated that the 1st respondent had not given any reason for adoption in the counter filed in the interim application in the suit whereas has given reasons for adopting â777 Oilâ in this counter to the rectification application. The counsel then relied on few judgments.
1. AIR 1990 DELHI 19 ----â M/s Hindustan Pencils Pvt. Ltd., Vs M/s India Stationery products Co. and anotherâ
2. JT 2011(3)SC225 ---- âT.V. Venugopal Vs Ushodaya Enterprises Ltd. And Anotherâ
were relied on to support his contention that when the goods and the marks are identical the benefit of honest and concurrent use does not arise considering the fact that the purity of the Register is to be maintained.
17. By adding a word as a prefix to another trade mark the similarity is not lost was the contention of the applicant for which he placed on the judgments reported in (1) AIR 1974 Madras---âShri K.R.Chinnikrishna Chetty Vs K. Venkatesa Mudaliar and Anotherâ
(2) AIR 1989 Madras 9- âShri V. Ramaswami and Bellie, J.J. Kali Aerated Water Works, Tiruchirapalli- Vs Shri Rashid and othersâ
18.Test to determine the similarity of the marks has been laid down by the Supreme Court in Cadila Health Care Ltd. Case â 2001 (5) SCC 73 âCadila Health Care Ltd. Vs Cadila Pharsmaceticals Ltd.âwas relied on:
19. Learned Counsel for the 1st respondent Mr. Sathish Kumar first raised the issue of maintainability of the applicants authority to file the application for rectification. The counsel submitted that the applicant is not a person aggrieved. He pointed out to the agreement dated 19.11.1990 and stated that NRDC had acquired the ownership from the Central Council for research in Ayurveda and Siddha and is now the order of the know how and the process together with the intellectual property rights. The licensee i.e. the present applicant shall not claim any exclusive right to the now how on the progress. It was also that the applicant shall pay a royalty to the NRDC. In these circumstances, the applicants cannot be said to be a person aggrieved.
20. The counsel then referred to the license agreement dated 29.08.2002. The word â777 Oilâ is not a brand name or trade mark but a descriptive term. It is a generic name.
21. The respondents counsel in reply to the applicants contention as to the non-disclosure of the list of medicine submitted that the respondents were illiterate persons and had misplaced the same and hence could not be filed in court.
22. Under Section 12 of the Act â special circumstances would apply and the mark therefore, ought not to be removed. In this regard, he relied on the judgements
(1) 1964(2) SCR 211-- âLondon Rubber co. Ltd. Appellant vs. Durex Products Incorporated and Anotherâ
(2) 2000 (20) PTC 561â âHindustan Pencils Private Limited and another Vs Universal Trading Companyâ
23. In rejoinder, the counsel for the applicant submitted that they are the persons aggrieved and that is the reason for filing a suit.
24. We have heard and considered the arguments of both the counsel.
25. Regarding the issue of user, the respondents own admission in their counter statement is that the applicants have been using the trade mark since 1993. It is also the case of the respondents that they adopted the impugned trade mark in the year 1992 and had been using the same since the year 1993. The only evidence produced below us is the drug license to say that they applied for and obtained license in the year 1993. A perusal of the drug license shows that the list of drugs for which license was granted is not enclosed. When the applicant raised this issue, the reply from the respondent was that the respondents being illiterate people who did not know the importance of the list had not kept it safely and had misplaced it. The applicant contends when the drug license is kept safe then why not the enclosure which contains the list - We agree. The respondents have not filed or produced before us any invoices or bills to prove their use. The drug licenses produced are not accompanied by the list of drugs. The list at page 7 of the respondents typeset contains a list which has the impugned trade mark mentioned. The date mentioned in this document is 24.02.005 which is renewed upto 31.12.2006. In such circumstances we are of the view that the respondents user if at all could be only from the year 2005 and not earlier than that. As we have already observed supra, the respondents in their counter statement have admitted the applicants use since 1993. It is therefore, clear that the applicants are prior in use.
26. The respondents reason given for adoption of the trade mark is not an acceptable one. The respondent therefore, cannot be said to be a proprietor of the trade mark as per Section 18(1) of the Act.
27. As regards the issue of delay and laches, the applicants have stated that they came to know of the respondents use only in the month of June, 2008 and have immediately filed a Civil Suit before the Madras High Court. The impugned trade mark has been registered in March, 2005. The respondents in their counter affidavit filed in July, 2008 to the suit application filed before the Madras High Court had stated that the trade mark was registered. The applicants immediately in August, 2008 filed this instant application for rectification. Therefore, the respondents objection as to delay and latches are rejected.
28. The mark are similar except for the prefix Sanjeevi, the goods are similar and the trade channels are the same. The possibility of confusion in such case is certain and not just likely. We, therefore, are of the view that the trade mark SANJEEVI 777 Oil which is subsequently adopted and used has to removed from the Register of Trade Marks.
29. For the reasons stated above, we direct the Registrar of Trade Mark to remove the trade mark âSanjeevi 777 Oilâ registered under No.1167605 in class 5 from the Register of Trade Marks. Accordingly, the original rectification application is allowed.