Semit Pharmaceuticals and Chemicals Private Limited Vs. the Deputy Registrar of Trade Marks and Another - Court Judgment

Excerpt:

Judgment:

(Circuit Bench Sitting at Kolkata)

Honble Shri Syed Obaidur Rahaman, Technical Member:

This miscellaneous application has been filed by the appellant in connection with appeal No. OA/01/2007/TM/KOL for stay of the order dated 04.08.2006 passed by the Deputy Registrar of Trade Marks, Trade Marks Registry, Kolkata whereby the opposition No. KOL-200831 was disallowed and application No. 1115015 in class 5 was ordered to proceed further with the specifications of goods to read as medicinal preparation containing vitamins for sale in the State of West Bengal.

2. The facts of the case is that the appellant is a company incorporated under the Companies Act, 1956 carrying on a leading and well established business as manufacturers, dealers, exporters and importers of a wide range of pharmaceutical and medicinal preparations and substances, bulk drugs, etc. sold under several well known and distinctive trade marks and one such trade mark is IVIT/I-VIT which was adopted by the appellants predecessors in business in the year 1993 for use in relation to medicinal and pharmaceutical preparations and the same has been in continuous and extensive use in respect of the aforesaid goods by the appellant and previously by its predecessor. On 15.07.2005 a notice of opposition was lodged by the appellant objecting the registration of the impugned mark of the respondent No. 2. The grounds of the opposition is that the appellant are carrying on a well established business of manufacturer, exporter and dealer of wide range of pharmaceutical preparations and are using the trade mark IVIT/I-VIt since the year 1993 and this mark was acquired by them vide deed of assignment dated 05.03.1996 which is being used and publicised continuously and extensively since then and that the application for registration for the same was pending under No. 593071; that on account of extensive use and publicity, the aforesaid mark of the opponent is exclusively identified and associated with them qua the goods contained therein and therefore the registration of the impugned mark which is deceptively similar to the mark of the opponent is likely to cause confusion and deception during the course of trade and hence prohibited under section 11 read with section 12 of the Trade Marks Act, 1999 (hereinafter referred to as the Act); that the very adoption of the impugned mark by the applicant is nothing but dishonest attempt on their part to trade upon and benefit from the goodwill and reputation already enjoyed by the opponent in their mark and hence they cannot claim any proprietary right under section 18 (1) of the Act; that the aforesaid mark of the opponent is well known and well reputed mark and therefore also the impugned mark is prohibited from registration in terms of section 11(2) and 11(3) of the Act. The opponent took objection to registration of the impugned mark under sections 9, 11, 12 and 18 of the Act and also prayed for exercise of discretion of the Registrar of Trade Marks, adverse to the appellants under section 18(4) of the Act.

5. The respondent No. 2s case is that the impugned mark was honestly adopted by them after conducting the market survey in October, 1997 and the same is being used continuously and exclusively since then.

6. The miscellaneous application was taken up for hearing at the Circuit Bench Sitting at Kolkata on 05.03.2009 when Shri Anjan Sen, Advocate appeared for the appellant and Shri H.P. Shukla, Advocate appeared for the respondent No. 2.

9. Learned counsel for the appellant submitted that the rival marks and rival goods are phonetically similar. The mark of the appellant is I-VIT and the mark of the respondent No. 2 is K-VIT. The use of the impugned mark by the respondent No. 2 is likely to cause deception and confusion during the course of trade. The mark was used since 1996 by virtue of the assignment deed dated 25.03.1996. The respondent No. 2 is continuously using the trade mark K-VIT for vitamin preparation. He also relied upon the judgments (i) Glucovita case (AIR 1960 SC 142) wherein it was held that the marks have to be considered as a whole; (ii) Cadila case (AIR 2001 SC 1952) – where it was held that in the case of medicinal preparations if user is confused by similar marks then disastrous effect would happen so stricter principle should be followed. He also relied upon a judgement of this Appellate Board in O.A.No.90/2004/TM/IPAB wherein the Registrar of Trade Marks was directed not to issue certificate of registration till further orders of the Board.

10. Shri S.P. Shukla, learned counsel for the respondent No. 2 submitted that they are using the mark K-VIT. It is not deceptively similar with the mark of the appellant. The respondent No. 2 is using the mark since the year 1996. The learned counsel contended that it is common in the trade to generally use the suffix VIT for medicinal preparations containing vitamins and in fact the suffix VIT is indicative of the goods of vitamin. As such it is common suffix and they are not deceptively similar. So many persons are using the suffix VIT for medicines of vitamin preparations. So there is no chance of confusion and deception in the minds of general public and trader. He relied upon the judgment 2007 (34) PTC 469 (DB) (Del) Astrazeneca UK Ltd. and anr. Vs. ORCHID Chemicals and Pharmaceuticals Ltd. wherein it was held as follows:

“18. The decisions which are referred to and relied upon by the counsel for the parties hereto, namely, Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 : PTC (Suppl) (2) 1(SC), Kaviraj Pandit durga Dutt Sharma v. Navratna Pharmaceuticals Lab, AIR 1965 SC 980: PTC (Suppl) (2) 680 (SC), M/s. Corn Products Refiding Co. v. Shangrila Foods Products Limited, AIR 1960 SC 142 : PTC (Suppl) (1) 13 (SC); Anglo French Drug Compny v. M/s. Balco Pharma, AIR 1984 PandH 430 : 1984 (4) PTC 54 (Del) were considered and discussed in the Biofarma case (supra) while dealing with the two marks ‘trivedon and ‘flaredon. It was held that since the opening syllable of the two competing trade marks in the said cases are completely different and distinct and in pharmaceutical trade it is natural to find names of various drugs almost similar to each other or having the same prefix or suffix, the competing words namely, ‘flaredon and ‘trivedon are dissimilar as the two marks start with distinct dis-similarities so far as the first syllable is concerned. Similarly, in the other decision namely, Cadila laboratories v. Dabur India Limited (supra) it was held that there is no possibility of ‘Mexate being pronounced and read as ‘Zexate. It was also laid down that 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…

20. We are informed that there are a number of such other similar names with the prefix ‘Mero which are in the market. They were also taken notice of by the learned Single Judge while dealing with the injunction application. In the decisions of the Supreme Court and this Court also, it has been clearly held that nobody can claim exclusive right to use any word, abbreviation, or acronym which has become pulici 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 an organ ailment or ingredient being publici juris or generic cannot be owned by anyone exclusively for use as a trade mark. In the Division Bench decision of this Court in SBL Limited (supra) it was also 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 licenced dealers well versed in the field and having knowledge of medicines. It was further held that the two rival marks, ‘Liv.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 uncommon features i.e. ‘52 and ‘T and that the two do not have such phonetic similarity so as to make it objectionable”.

It was further held in the above case that ‘Meromer and ‘Meronem are found to be prima facie dissimilar to each other. They are Schedule-H drugs available only on doctors prescription. The learned court observed that the two marks are distinct and the features are found to be dissimilar and they are not likely to create any confusion.

11. After hearing both the parties and going through the facts of the case and records and documents and case laws referred before the Bench, we are of the view that it is a settled law that the word ‘VIT is a generic word and is used for vitamins. So there is no cause for confusion between the rival marks I-VIT and K-VIT. We are prima facie satisfied that the marks are different and there is no visual and phonetic similarity between them and there is no likelihood of confusion and deception. Both marks are used in medicine business and trade and there is no cause for confusion and deception among the trade and general public. We also observe that the mark I-VIT and K-VIT is different. Nobody can be misled and the marks are not deceptively similar.

12. In view of the above observations, we are inclined to grant injunction till the next date of hearing of the main appeal. M.P. is disposed of in the above terms. No order as to costs.