Glenmark Pharmaceuticals Ltd., Vs. M/S. Bal Pharma Ltd., and Another - Court Judgment

Excerpt:

Judgment:

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

Appeal arising out of the order dated 05.01.2007 passed by the Deputy Registrar of Trade marks dismissing the opposition No.MAS-164028 and allowing application No.105772B in class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 ( in short the Act).

2. The first respondent on 9.11.2001 filed an application for registration of the trade mark ‘Candizole (word per se) in class 05 under application No.105772B claiming user since 01.01.2000. The said application was advertised in the Trade marks Journal Mega 2 dated 25.09.2003 at page 780 and the same was made available to the public on 02.12.2003. The appellant herein filed their notice of opposition on 25.02.2004 and the first respondent herein filed their counter statement on 07.05.2004. On completion of the formal procedures, the matter was heard by the Deputy Registrar and order was passed on the finding that the rival marks on comparison as a whole are phonetically, visually and structurally wide apart and cannot be held to be deceptively similar within the meaning of section 2(1) (h) of the Act. Section 11 read with section 12 of the Act is not maintainable as there is no possibility of confusion and deception when the rival marks are not deceptively similar. Adoption of the trade mark ‘Candizole is honest and bonafide and has been adopted without any reference to any other trade mark. The first respondent is entitled to registration within the meaning of section 18(1) of the Act. The prefix ‘Candid is common for similar products and the appellant cannot claim exclusive right over the word. The opposition has been filed only to delay the registration proceedings.

3. Aggrieved by the said order the opponent/appellant is before us on appeal.

4. The facts of the case are:-

The appellant is a pharmaceutical company for the last three decades in niche segments like dermatology, diabetes, internal medicines, pediatrics, gynecology and ENT. The appellant is approximately Rs.8,433.82 million integrated pharmaceutical company marketing its products in 91 countries across the globe. The appellants research team across its R and D centres are focused on developing formulations for launching branded generics across the globe. In order to distinguish their goods from those of others, the appellants have adopted several trade marks, most of which have been registered under the Act. By virtue of high standards of quality, wide publicity and extensive sale, their trade marks are well known throughout the country and abroad. The appellant is the proprietor of the trade mark ‘Candid and a series of marks containing the word ‘Candid and / or prefix ‘Candi in class 5. The appellant has been vigilant in taking action against the infringers. The appellant adopted the trade mark ‘Candid in the year 1984. The appellant launched their products under the brand name ‘Candid which was instantly accepted by Dermatologists all over India. The appellant thereafter introduced a series of Candid family formulations at regular intervals, encompassing an ever widening spectrum – Candid cream, Candid lotion, Candid Powder, Candid vaginal tablets and Gel, Candid Ear drops, Candibiotic, Candederm, Keto-Candid, Candid-TV, Canditral. The appellant has been using the said trade mark continuously and extensively since 1979. On account of such large scale and long user, the trade marks have come to be associated with the appellants in Indian market and in export markets. The trade mark ‘Candid has thus become a household name in India and abroad and is a “well-known trade mark” within the meaning of section 2(zg) and section 11 of the Act.

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

(a) The impugned order is erroneous and contrary to the principles of law and the facts and circumstances of the case and is liable to be set aside.

(b) The second respondent erred in holding that the rival marks are phonetically, visually and structurally wide apart.

(c) The Deputy Registrar erred in holding that the first respondent has honestly adopted the trade mark after obtaining official search when no search report was even brought on record.

(d) The Deputy Registrar has failed and neglected to appreciate the fact that the appellant being the registered proprietor of the trade mark ‘Candid and its series of marks and prior adopter and user since 1979 and as such the adoption by the first respondent is most dishonest and cannot claim to be the proprietor of the trade mark.

(e) The registrar erred in holding that the prefix is common for similar products when no evidence was produced before the registrar.

(f) The registrar failed to appreciate the fact that the first respondent has copied almost the entire mark ‘Candid from the well known registered trade mark Candid and its series of trade marks without any cogent explanation for adoption of the impugned trade mark.

(g) The registrar failed and neglected to appreciate that the adoption of the trade mark by the first respondent would lead to confusion and deception as to the source and origin of the goods in view of the Candid series of marks belonging to the appellants.

(h) The registrar erred in holding that the goods of the first respondent cannot be sold without prescription despite the well settled law delivered by the Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharma Ltd – AIR 2001 SC 1952.

(i) The Registrar erred in holding that the first respondent had honestly adopted the trade mark when the first respondent had given contradictory explanation for adoption.

(j) The Registrars decision is bad in law and on facts.

6. The first respondent filed their counter statement denying the various allegations made in the memo of grounds of appeal. The first respondent further submitted that the appellant has suppressed the material facts and has abused the process of law for wrongful gain and the appeal has been filed with malafide intention to block the increase in goodwill and reputation of the first respondents trade mark. The rival marks Candid and Candizole are visually, phonetically and structurally different from each other. The appellant is not entitled to the relief prayed for in view of a serious suppression of material facts. The appeal is not maintainable under law and is fraudulent, frivolous and vexatious and intended only to harass the first respondent. The appeal is liable to be dismissed in limine.

7. The matter was taken up for hearing on 15.04.2009. Learned counsel Shri A. Mahesh A.Mahodgut appeared for the appellant and learned counsel N. Ramaswami appeared for the first respondent.

8. Learned counsel for the appellant submitted that the rival marks were candid and ‘Candizole. The appellant had adopted the trade mark ‘Candid in the year 1978 and had launched the product in the year 1979. The counsel further submitted that though the appellant had filed the notice of opposition stating that the impugned registration would be in contravention of the provisions of the Act, the second respondent had not considered the same. The Registrar had not given any finding as to section 9 of the Act. The first respondent had not filed any search report but was stated by the Registrar that a search report was filed which is totally an incorrect statement. The first respondent had not filed any evidence in support of their application. The counsel drew our attention to the list of registrations and the list of pending registration applications mentioned in the notice of opposition and submitted that their trade mark was registered as early as 1978 itself. The appellant had also filed registration certificates in proof of the same. Sales invoices were also filed as to prove their user from the date of inception as well as to prove their sales. A certificate issued by the auditor to certify their promotional expenses was also filed. Some advertisement materials were also produced. The counsel further relied on the counter statement filed before the Registrar and stated that the first respondent company was established only in the year 1987 and were subsequent users of the trade mark. The first respondent had not given reason for adoption of the impugned trade mark. The Registrar had passed the impugned order on the ground that the rival marks were not similar, the first respondents adoption was honest, the word Candid was common to medical trade and the respondents goods were Schedule H drugs and were sold on prescription and there was no confusion and deception which is against the legal principle as no reason given for adoption.

9. The learned counsel for the appellant relied on various judgments. The counsel submitted that as held by the Supreme Court in Corn Products Case (AIR 1960 SC 142) it was not sufficient to give a list of series of marks having common words as prefix or suffix being registered but should prove their user. He also submitted that when no sufficient explanation was given for adoption, only amounts to deliberate attempt of dishonest adoption. The words should be compared as a whole and not part of a word compared with the other. The factors to be considered for deciding the issue of deceptive similarity are to be done based on the observations made in the Cadila judgment by the Supreme Court which followed the Amrithdara case.

10. Learned counsel for the first respondent mainly submitted that the appeal has got to be dismissed for suppression of material facts. The appellant had filed the application for registration of the trade mark in the year 2003 and filed the notice of opposition to the impugned trade mark in the year 2004, in which the pending application was not disclosed and he relied on some judgment in support of the same. The counsel submitted that the present appeal is against section 17 of the Act , when the trade mark contains more than one part, a part of it should not be owned by the registered proprietor as a separate trade mark.

11. We have heard both the counsel and carefully considered and have gone through the pleadings and documents.

12. We shall first deal with the issue as to suppression of material facts. The respondent has raised this issue only at the appeal stage. Only in the counter statement filed before this Appellate Board this issue has been raised which does not contain any detailed facts. In the instant case, by not mentioning the application pending, we do not find any error or mistake committed by the appellant which will turn the merits of the case. As has been observed by the Supreme Court in SJS Business enterprises Private Ltd. Vs. State of Bihar and Ors 2004 (7) SCC 166.

“As a general rule, suppression of material fact by a litigant disqualifies such litigant from obtaining any relief. This rule has been evolved out of the need of the Courts to deter a litigant from abusing the process of court by deceiving it. But the suppressed fact must be a material one in the sense that had it not been suppressed it would have had an effect on the merits of the case.”

13. The issue has been raised at this stage. Even assuming that legal pleas can be raised at any time, it should not be an after thought. The issue is, therefore, answered in favour of the appellant.

14. The other defence was that the appeal is not maintainable and is against the provisions of section 17 of the Act. This has not been raised either before the Registrar in the opposition proceedings or before the Appellate Board in the counter statement whereas it has been raised only during the course of arguments before us. In such circumstances, we do not think it necessary to go into that issue. That apart, we are to deal only with the findings of the Registrar appealed against and not to travel beyond that.

15. The defence is that there are a number of marks which have ‘Candid as a prefix and that the appellant cannot claim exclusive rights over the trade mark. In this connection we would like to quote the observation of the Supreme Court in the case of Corn Products Vs. Shangrila Food Products –AIR 1960 SC 142 –:-

“Where there are a “series” of marks registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature . But before the applicant can seek to derive assistance for the success of his application for registration from the presence of a number of marks having one or more common features which occur in his marks also, he has to prove that these marks had acquired a reputation by user in the market.”

The court further held that:

“the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register.”

16. In the light of the above, we are of the view that the first respondent has only stated about the registration and no user has been proved. We, therefore, reject the defence of the first respondent.

17. The other issue is whether the trade marks are deceptively similar and likely to deceive or cause confusion to public at large. The question whether the two marks are likely to give rise to confusion or not is a question of first impression and it is well recognized that in deciding the question of similarity between the two marks, the marks have to be considered as a whole (Corn Products Vs. Shangrila Food Products (supra).

18. In the case of Glenwood Laboratories Inc Vs. American Home Products Corp 173 USPQ 19 (1972) 455 F Report 2nd 1384 (1972), the Court of the United States had held that:

“the fact that confusion with respect to non-medicinal products as an additional consideration for the Board as is evident from that portion of the opinion in which the Board stated……”the products of the parties are medicinal and applicants products is contraindicated for the disease which opposers products is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.”

19. The Supreme Court in Cadila case (2001 PTC 541 SC – Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd) has held:

“While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be on a par with cases involving non medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product from another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to identity of the product itself could have dire effects on the public health.”

20. Based on the above observation, we have to deal with the present issue. A perusal of the rival marks are clearly deceptively similar and are phonetically similar. The appellants have been using different trade marks like Candid, Candidern, Canditral and the use of the trade mark ‘Candizole is likely to cause confusion. It is also a well settled principle that while considering the question of similarity between the two marks, we have to approach it from the point of view of a man of average intelligence and imperfect recollection. When the marks considered as a whole are likely to cause confusion, the registration should be refused. The appellants are prior in use and their rights are to be protected by refusing the first respondents application for registration of a deceptively similar trade mark. The issue of deceptive similarity is therefore answered in favour of the appellant with the observation that the trade marks are deceptively similar. Taking into consideration all these aspects, we are of the view that the order of the Deputy Registrar cannot be sustained and accordingly the same is set aside. The appeal is, therefore, allowed with no costs.