M/S Merck Kgaa Vs. M/S Galaxy Hompro and Another - Court Judgment

Excerpt:

Judgment:

(Circuit Bench Sitting at Delhi)

HON'BLE Ms.S.USHA, TECHNICAL MEMBER:

The above appeal is against the order dated 28.06.2001 passed by the Assistant Registrar of Trade Marks disallowing the opposition No.DEL-8313 and allowing the application No.517814 in class 5 to proceed to registration under the provisions of the Trade and Merchandise Marks Act, 1958 (in short the Act).

2. The first respondent herein filed an application for registration of the trade mark ‘RECIBION under application No.517814 in class 5 in respect of medicinal and pharmaceutical preparations on 03.10.1989 claiming user since 01.04.1987. The said application was accepted and advertised in the Trade Marks Journal No.1065 dated 16.10.1993 at page 689. the appellant herein filed their notice of opposition on 15.12.1993 opposing the registration. The first respondent filed their counter statement denying the material averments made in the notice of opposition. The Assistant Registrar / second respondent herein passed the impugned order on the findings as hereunder:-

(a) The impugned trade mark ‘RECIBION is not deceptively similar to that of the appellants trade mark ‘CEBION and therefore not prohibited by operation of section 12(1) of the Act.

(b) The appellants registered trade marks are phonetically and visually different from that of the impugned trade mark and is not prohibited for registration under section 11(a) of the Act.

(c ) The first respondent has been using the impugned trade mark for about one year and more on the date of application for registration and they are entitled to claim to be the proprietor of the trade mark and the registration is in accordance with the provisions of section 18(1) of the Act.

3. Aggrieved by the said order, the appellants filed an appeal before the Honble High Court of Delhi. The same was numbered as CM(M) No.587 of 2001. The appeal was, thereafter, transferred to the Intellectual Property Appellate Board as per the provisions of section 100 of the Trade Marks Act, 1999 and re-numbered as TA/179/2003/TM/DEL.

4. The appellant is a globally renowned pharmaceutical corporation engaged in the business of manufacturing and marketing various pharmaceutical and medicinal preparations throughout the world including India. The appellant has its subsidiary in India under the name E Merck India Limited. They are manufacturing and marketing pharmaceutical preparations under various trade marks all of which have common suffix ‘BION and have been using the same in India for the past 15 years.

5. The appellants are the registered proprietors of the trade marks with the suffix ‘BION. The details of registration are as under:-

S.No.

MARK

REGN.NO.

CLASS

GOODS

a.

BETABION

147037

5

Pharmaceutical preparations

b.

POLYBION

176836

5

Vitamin B Complex preparation for treatind diseases caused by Vitamin B complex deficiencies

c.

GEROBION

177237

5

Medicinal and pharmaceutical preparations particularly a compound preparation containing vitamins and lipotropic for geriatric practice

d.

SANOBION

184514

5

Pharmaceutical preparation containing iron manganese copper vitamin C, vitamin B 12 and folic acid indicated in anaemias due to Haemorrahages.

e.

SOLEROBION

188353

5

Medicinal preparations for the treatment of arteriosclerotic symptoms, peripheral vascular disorders dystoplic gastric ulcer liver parenchyurlesion autonomic nervous disturbances, essential hypertension(supportive therapy)

f.

STYPTOBION

159214

5

Pharmaceutical and medicinal preparations containing vitamins

g.

NEUROBION

228635

5

Pharmaceutical preparations containing vitamins for the treatment of disorders of the nervous system

h.

TESTOBION

246755

5

Pharmaceutical preparations for human use

i.

DOLO NEUROBION

271267

5

Pharmaceutical and medicinal preparations.

j.

NASIBION

5

-DO-

k.

CEBION

147036

5

Vitamin C preparations (Advt. in J. No.101)

6. The appellants products bearing the various brands are in great demand and are highly reputed. The sales figures prove their reputation in the market. The above mentioned trade marks are not only registered in India but also registered in various other countries of the world and thus possess international goodwill and reputation and are therefore internationally famous trade marks.

7. The present appeal has been filed on the following grounds:-

(a) The second respondent erred in holding that the trade mark ‘RECIBION is not likely to cause confusion or deception with the trade mark ‘CEBION by not following the principles laid down by the Apex Court while deciding the issue of deceptive similarity.

(b) The second respondent did not apply the test of unwary customers average intelligence as laid down by the Apex Court while deciding the test of deceptive similarity.

(c) The second respondent failed to apply one of the crucial test of applying the principle of ‘imperfect recollection while deciding the question of deceptive similarity.

(d) The second respondent erred in passing the impugned order without applying the well established “series trade mark” test of deceptive similarity that where a proprietor uses “series trade marks” all having common prefix or suffix then the use of competing trade mark which contains such series of common prefix or suffix is likely to be mistaken for or with, the first proprietors “trade mark series” and therefore likely to cause confusion or deception.

(e) The second respondent erred in not applying the test of deceptive similarity to the effect that where the whole of registered trade mark is contained as essential part of the impugned trade mark, the use of the impugned trade mark is likely to cause confusion.

(f) The second respondent erred in not applying the test of phonetic similarity as laid down by the Apex Court to the effect that considering that English is a foreign language in this country and that in rival marks ‘RECIBION and ‘CEBION, the letter ‘R is likely to be slurred in the course of imperfect pronunciation and confusion would arise. The second respondent erred in applying the principles laid down by the Supreme Court in Cadila Case whereas the degree of burden to prove or establish likelihood of confusion in cases of drugs is much less as compared to the trade marks used in non-medical goods.

(g) The second respondent erred in granting registration whereas it ought to have been refused in order to maintain the purity of the Register.

(h) The second respondent failed to consider the fact that the applicant / first respondent has not given any explanation for the adoption of the trade mark ‘RECIBION.

8. The first respondent entered appearance through their counsel and advanced their arguments without filing any counter statement. We have heard Shri Sachin Gupta learned counsel for the appellant and Shri Rajesh Chadha learned counsel for the first respondent in Circuit Bench Sitting at Delhi on 6.5.09.

9. The learned counsel for the appellant contended that they had obtained worldwide registration of the trade mark ‘BION as a suffix for various marks like ‘BETABION ‘POLYBION etc., and had been using the same since 1931. The first respondent applied for registration of the trade mark ‘RECIBION on 03.10.1991 under NO.517814 in class 5 claiming user since 1987. The adoption of the trade mark ‘RECIBION by the first respondent is dishonest. The explanation given for adoption is that ‘BION means B-complex and vitamin which is totally incorrect. The averments that the word ‘BION is common to trade has not been proved by the first respondent.

10. The registration of the trade mark ‘RECIBION is in contravention of the provisions of sections 9,11,12 and 18 of the Act. The sales figures relating to the sale of the products bearing the impugned trade mark is very less. The counsel also submitted that they have obtained various registrations of their trade marks and also brought to our notice the invoices filed in support of their case. The counsel also relied on various judgments in support of his case. He also submitted that there was every possibility of the first respondent passing off its goods as that of the appellant as the rival marks were deceptively similar which would cause confusion in the mind of the public.

11. The learned counsel for the first respondent contended that a search was made and found no conflicting marks and had filed the impugned trade mark application. He also submitted that the adoption was honest and submitted that in counter statement filed before the Trade Marks Registry, the first respondent had explained as to how it derived the trade mark ‘RECIBION. There can be no monopoly over the word ‘BION.

12. The counsel further submitted that the invoices filed by the appellants does not reflect the trade mark ‘CEBION and the invoices are irrelevant as they are not of the appellants company. The rival marks are not deceptively similar. The counsel also relied on various judgments in support of his case. During the course of the arguments, the counsel filed some cartons to prove the contention that there were various other products bearing the trade mark ‘BION as suffix. The counsel, therefore, prayed that the impugned order passed by the second respondent was in order and the appeal be dismissed.

13. In rejoinder to the counsel for the first respondents arguments, the appellants counsel objected to the cartons filed by the first respondent during the course of the argument and submitted that the same must not be considered. The counsel also submitted that the invoices were of the appellants only.

14. We have heard and considered the arguments of both the counsel. The main issue that arises for consideration is whether the rival marks – ‘RECIBION and ‘CIBION are deceptively similar and if so whether the registration of the trade mark ‘RECIBION would lead to confusion.

15. The test of comparison of two words were decided by Lord Parker in Pianotist Co. Lds application (1906) 23 RPC 774 at page 777 as follows:-

“You must take the two words. You must judge them both by their look and by their sound. You must consider the goods to which they are to be applied must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the mark. If considering all the circumstances, you come to the conclusion that there will be a confusion that is to say not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in goods, then you may refuse the registration or rather you must refuse the registration in the case.”

16. It therefore follows that the mark has to be tested visually and phonetically.

17. In Parle Proucts Vs. J.P. and coats (AIR 1972 SC 1359) the Supreme Court laid down the following test:-

“It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to be misled a person usually dealing with one to accept the other if offered to him.”

In Cadila Laboratoreis Ltd. Vs Dabur India Ltd. 1997 PTC (17) page 417 the Delhi High Court observed:

“As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered.”

In F. Hoffmann Le Roche and Co Ltd. Vs. Geoffrey Manners and Co. Pvt. Ltd. 1982 PTC 335 the Supreme Court while deciding the issue of deceptively similarity held:

“The question of deceptive similarity must therefore be decided on the basis of the class of goods to which the two marks apply subject to the limitation agreed to by the respondent. From the nature of the goods, it is likely that most of the customers would obtain a prescription from a doctor and show it to the chemist before the purchase. In such a case except in the event of handwriting of the doctor being very bad or illegible the chance of confusion is remote. As we have already observed the evidence shows that there are as many as 57 trade marks in the Register of Trade Marks with suffix ‘VIT”. Therefore, even an average customer would know that in respect of vitamin preparations the word ‘VIT occurs in large number of trade marks and because of this he would naturally be on his guard and take special care against making a mistake.”

In SBL Limited Vs. Himalayas Drug Company – 1997 ptc (17) 540, the Division Bench of the Delhi High Court held that possibility of deception or confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicines. It was further held that two rival marks ‘LIVE-52” and “LIV-T” contain a common feature LIV which is not only descriptive, but also publici juris and that a customer will tend to ignore the common feature and will pay more attention to the uncommon features i.e. ‘52” and “T” and that the two do not have such phonetic similarity so as to make it objectionable.

In Astrazenecas case- 2007 (34) PTC 469 (DB) Del it was held that ‘Meropenem which is the molecule was used for treatment of bacterial infections. The prefix ‘Mero became a generic term, publici juris and distinctive in nature and therefore the customers would tend to ignore the common feature and would pay more attention to the uncommon feature.

In Cadila Laboratories case (supra) it was observed,

“According to the decision laid down by various courts, the importance of the prefix of the word should not be taken due weightage and important (sic) in case where the suffix is common. Where the suffix of the word is common, regard must be led to the earlier portion of the word which distinguishes one from the other. Where the suffix is common the earlier portion of the word is natural, necessary and in fact, the actual mark of distinction.”

18. The observations of the various court and the tests are squarely applicable to the case on hand. The suffix ‘BION is common to trade is to be considered to see if the marks are deceptively similar. We have also seen that the appellants have been using various trade marks with the suffix “BION” and that apart other traders are also using ‘BION as suffix in their trade mark. In the light of the observations of various courts when ‘BION is commonly used tsehe customers would tend to ignore the common feature and pay more attention to the uncommon feature. In such circumstances, the possibility of confusion is not present and the registration of the impugned trade mark will not be in contravention of the provisions of the Act.

19. Consequently, we find no infirmity in the findings of the Assistant Registrar of Trade Marks in the order dated 28.06.2001. We, therefore, dismiss the appeal and allow the application for registration.There shall be not order as to costs.