Judgment:
1. On 4.7.1991 M/s. Cadila Laboratories Ltd., Ghodasar, Maninagar, Ahmedabad, Gujarat (hereinafter referred to applicants) applied for registration of trade mark NEOPLATIN under application No. 553896 in class 5 in respect of Pharmaceutical and medicinal preparations. After the examination this application was advertised in the trade marks journal No. 1171 dtd. 16.3.1998 at page 2396.
2. On 3.6.1998 M/s. Raptakos Brett & Co. Ltd., Dr. Annie Besant Road, Worli, Mumbai, Maharashtra (hereinafter referred to opponents) opposed the registration of trade mark advertised as aforesaid on the following grounds:- (1) That the opponents are the manufacturers and dealers in pharmaceutical drugs, dietitic specialities, tonics, injections, syrups, ointments etc. and are the owners and actual users of the registered trade mark NEOPEPTINE under No. 265564 in class 5. The said registrations valid and subsisting.
(2) That the applicants trade mark is phonetically, visually and structurally similar to the opponents aforesaid registered trade mark which is being used for the last over 27 years and definitely cause confusion and deception in the minds of the public.
3. The opponents further prayed that the impugned application of the applicants be refused and costs of proceedings be awarded to them.
4. The applicants filed their counter statement on 11.1.1999. In their counter statement the applicants stated that they are carrying on an established business of manufacturing pharmaceutical and medicinal preparations since last many years. Further they submits that their predecessor in title honestly coined and invented the mark NEOPLATIN from the active drug CARBOPLATIN. Rest of the counter statement is mere denial of the notice of opposition.
5. Attention of the opponents were invited vide this office letter No.GEN/2086-2987 dtd. 26.2.1999 for filing evidence under Rule 53. In response to this notice opponents filed an affidavit of Shri Tilakchand Kunverjibhai Shah, Company Secretary and the Constituted Attorney alongwith exhibits. In exhibit - 1 opponents have furnished sales figures pertaining to the goods sold under the trade mark NEOPEPTINE.Sale of NEOPEPTINE liquid in the year 1987 was Rs. 22,06,240/- which was raised upto Rs. 1,64,67,607/- in the year 1997-98. Sale of NEOPEPTINE DROPS m the year 1987 was Rs. 1,24,91,717/- which was raised upto 4,77,74,374/-. Similarly sale in respect of NEOPEPTINE 100's CAPSULES in the year 1987 was Rs. 18,49,688/-which was raised upto Rs. 29,28,299/-in the year 1997-98. The applicants have also filed affidavit of Shri Arun M. Parikh, Vice President (Legal) under Rule 54.
In para 2 of the affidavit the applicants clearly stated that they are using the trade mark NEOPLATIN since the year 1991. Applicants have furnished few copies of Indian Drug Review. However the same does not reveal anything about the sale and use of the trade mark NEOPLATIN.Thereafter the opponents have filed, their reply evidence by way of an affidavit dtd. 24.5.2002 of Shri Ashok V. Bhave, constituted attorney of the opponents company. This matter was set down for hearing on 20.3.2001 and after several adjournment, finally came up before me for hearing 3.1.2002 when Dr. R.H. Acharya, Advocate of H.K. Acharya & Co.
appeared for the opponents and Shri R.R Shah, Advocate of R.R. Shah & Co. appeared for the applicants. Hearing concluded on the same day and order was reserved.
6. At the outset Shri R.R. Shah, Advocate for the applicants drew my attention to the TM-16 dtd. 5.3.2001 and submit that the same be allowed. The opponents counsel Dr. Acharya consented for the same, hence, I am allowing the TM-16 by virtue of order dtd. 2.5.1997 passed by the Hon'ble High Court of Gujarat. Henceforth the name of the applicants company is amended to read as 'Cadila Healthcare Ltd., Zydus Tower, Satelite Cross Roads, Sarkhej-Gandhinagar Highway, Ahmedabad 380015'. Shri Shah thereafter drew my attention towards the flaws in the opponents plaint and affidavit filed under Rule 53. He pointed out that the opponents have not complied with the mandatory provisions of Rule 51. Affidavit dtd. 23.4.1999 lacks verification clause and he argued that the affidavit is not properly verified and cannot be admissible as evidence in accordance with Civil Procedure Code 5 of 1908, Order 19 Rule 3. In support of his contention Shri Shah placed reliance on Sunder Industries and Anr. v. General Engineering Works, New Delhi, AIR 1982 Delhi 220, Dr. Acharya in reply submits that the opponents in their notice of opposition mentioned all the details of their registered trade mark except journal number which cannot be treated as violation of Rule. Regarding verification clause in the affidavit he submits that though the said clause was not affirmed in the affidavit dtd. 23.4.1999, yet it was very much incorporated in reply affidavit dtd. 24.5.2000. After hearing the arguments of both the attorneys I am of the opinion that merely omission of journal number in the notice of opposition is not considered as violation of Rule 51 of the Trade and Merchandise Marks Rules, 1959 and lacks of verification clause in earlier affidavit has been corrected in reply affidavit dtd.
24.5.2000. Under these circumstances, I cannot dismiss the opposition merely on technical ground and without going into merits of the case.
Hence, I reject preliminary objections raised by the opponents attorney. Here I must refer the paragraphs of the observations by Hon'ble Supreme Court while considering the interpretation of Rule 3 of Punjab and Haryana High Court Rules requiring filing of copies of Memorandum of appeal for valid presentation of Letters Patent Appeal observed:- "We must always remember that procedural law is not to be tyrant but a servant, not an obstruction that procedural prescriptions are the hand maid and not the mistress, a lubricant, not a resistant in the administration of justice.
Where the non compliance, the procedural will thwart fair hearing or prejudice doing of justice to parties, the rule is mandatory. But grammar apart, if the breach can be corrected without injury to just disposal of the case, be should not enthrone a regulatory requirement into a dominant desideratum. After all courts are to do justice, not to wreck this end product on technicalities." 7. Since the procedural objections raised by the opponents are overruled I will now examine the objections raised by the opponents under various sections of Trade and Merchandise Marks Act, 1958.
8. First I take up opponents objection under Section 9 of the Act. The Ld. Counsel for the opponents adopted the trade mark NEOPEPTINE in respect of medicinal & pharmaceutical preparations. The opponents got registered their mark by virtue of considerable sale and large publicity of the aforesaid goods bearing trade mark NEOPEPTINE. The Ld.
Counsel for the applicants argued that applicants mark NEOPLATIN is a coined word hence distinctive. Section 9(5) of the Act provides that in determining whether the trade mark is distinctive or capable of distinguishing the goods the tribunal might have regard to the extent to which the trace mark inherently distinctive or inherently capable of distinguishing and also to the extent to which the mark is in fact so adopted to distinguish or capable of distinguishing by virtue of use of the mark or any other circumstances. In the light of foregoing provisions of the Act the opponents got registration by virtue of use of the mark. The applicants mark on the other hand is deceptively similar to the opponents mark. It is well established that the mark must be adopted to distinguish the goods of the applicants from the similar goods of the other traders. In the present case the applicants have failed to adopted to distinguish the goods from similar goods of the opponents. I therefore, sustain the objection under Section 9 of the Act.
9. Now I take up opponents objection under Section 11(a) of the Act. To sustain the objection the initial onus is upon the opponents to prove that the mark has acquired reputation by use thereof. In this case the opponents have claimed user of the trade mark NEOPEPTINE since last over 27 years. Besides this the opponents are the registered proprietors of trade mark NEOPEPTINE under No. 265564 in class 5. The applicants on the other hand not filed any supporting evidence. In my view the trade mark of applicants NEOPLATIN has not been used by the applicants for a substantial period of time, hence, I should not proceed further to examine the objection of the opponents. However, to avoid any chance of confusion and deception the rival marks must be compared. The opponents mark is NEOPEPTINE and applicants mark is NEOPLATIN. Opponents mark consists of 10 letters whereas applicants marks consists of 9 letters. Suffixes and prefixes of both the opponents and applicants marks are same. Dr. Acharya, Advocate for the opponents argued that applicants mark is proposed and in absence of any use of the mark there is possibility of confusion and deception between the rival marks. He placed his reliance on Cadila Health Care Ltd. v.Cadila Pharmaceuticals Ltd., (2001 PTC 541 SC). In this case the Hon'ble Supreme Court observed that "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 one another by the consumer. While confusion in the case between the 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 the identity of the product itself could have dire effects on the public health". In reply Shri Shah argued that word NEO is a common prefix in the pharmaceutical trade, hence, there will be no confusion and deception will arise. He referred the decision of Hon'ble High Court (2001 PTC 601) wherein trade mark LIPICARD and LIPCOR were held dissimilar even prefix in both the marks were same. To give more light on this issue I must refer few cases decided by the Hon'ble Court. In Ciba Geigy Ltd. v. Crosslands Research Laboratories Ltd., 1996 PTC (16) 1 trade mark VOLTA-K and VOL-TAREN were held similar, in Hochest A.G. v. Unisule (P) Ltd., 1996 PTC (16) 381 trade mark BARAGAN and BARALGAN were held similar by the Hon'ble Delhi High Court, in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC) the Hon. Supreme Court of India held trade mark FALCITAB and FALCIGO were similar, in Astra IDL Ltd. v.The Pharma Ltd., 1991IPLR 207 : 1992 PTC 137 the Hon. High Court of Mumbai held trade mark BETALONG & BETALOC were similar and in Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd., AIR 1989 Delhi 44 : 1988 PTC 273 trade mark CALMPOSE and CALMPROSE were held similar. In my view the prefix of any word is the deciding factor on which one can differentiate one word with the other. In Kerley law of Trade Marks 10th edition page 467 it was observed that "the first syllable of a word mark is generally the most important as there is tendency of persons using English language to slur the termination of words". Shri Shah, Advocate for the applicants submitted that the chance of deception and confusion are negligible in this case as the medicines under rival marks are sold on Doctors prescription. In my view certain medicines even Schedule 'H' drug in our country available freely on chemists counter without any prescription of the registered medical practitioners. To substantiate my opinion findings of the Hon'ble Court in relation to the case Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd., 1988 PTC 273 are more relevant. The dispute was between the users of two trade mark CALMPOSE and CALMPROSE. It was contended that the said medicines can only be sold on the Doctors prescription, and therefore, there can be little likelihood of confusion, Held "it is true that the said drugs are supposed to be sold on Doctor's prescription, but it is not unknown that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have CALMPOSE may pass off the medicines CALMPROSE to any unwary purchaser as the medicines prepared by the plaintiff. The test to be adopted is not the knowledge of the Doctor, who is giving the prescription. The test to be adopted is whether the unwary customer who goes to purchase the medicines can make a mistake".
10. In Astra IDL Ltd. v. T.T.K. Pharma Ltd., AIR 1992 Bombay 35 : 1992 PTC 137, the question arose whether the word BETALOC was deceptively similar to the word BETALONG. BETALOC is used in connection with pharmaceutical preparations. A single Judge of the Bombay High Court has held following in the Ranbaxy Laboratories Ltd., (supra) that: "In the present circumstances, Doctor's prescription factors has lost its importance since the reality of the situation cannot be ignored. In India schedule drugs which are to be sold under Doctor's prescription are even sold without production of Doctors prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken. In case where the facts of the medicines being sold on Doctor's prescription has been taken into consideration for deciding whether there was no likelihood of confusion being created, the marks were not visually, phonetically and structurally similar. In the instant case, the two marks BETALOC and BETALONG being visually, phonetically and structurally similar and so close to each other that it outweighs the weightage to be given to the factor that the goods are schedule drugs. The two marks are to be compared as whole and the prefix BETA cannot be ignored the matter of such comparison".
11. In view of the above observations I come to the conclusion that in any mark it is not the suffix that is the controlling sound but it is the prefix which makes the proximity of the marks. In view of the above observations I uphold opponents objection under Section 11 of the Act.
Since the opponents are the registered proprietors of trade mark in India, I also up hold the opponents objection under Section 11(e) of the Act.
12. Now I deal with opponents objection under Section 12(1) of the Act.
The following two points are to be considered for sustaining the opponents objection under Section 12(1) of the Act. (1) The mark applied for is identical or deceptively similar to a trade mark already registered in the name of a different proprietor, and (2) the goods for which the registration is sought are the same or are of the same description as those for which the other mark is registered.
13. The second point concerning the goods is satisfied in this case since the goods under both the marks are same and also the medicines are being schedule H drug. Accordingly I upheld that the goods under the rival marks are identical. Now coming to the aspect of comparison of trade mark. In this connection, I am to cite famous dictum of Lord Parker in Pionotist case (23 RFC page 774) containing the guidelines for the comparison of word marks as under:- "You must take the two words. You must judge of them both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customers who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider that is likely to happen if each of these trade mark is used in a normal way as a trade mark for the goods by the respective owners of the marks. If considering all these 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 other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you must refuse the registration or rather you must refuse the registration in that case." 14. Dr. Acharya, Advocate for the opponents contended forcibly that there is a substantial chance of conflict between the rival marks. He argued that both the marks start with identical prefix NEO and end with suffix TIN but only difference between the rival marks lies in the fact that two letters LA of the applicants marks is different. Dr. Acharya argued that these two letters do not makes any difference in judging the similarity between the rival marks and there is every chance of conflict with visual, phonetical and structural similarity between the rival marks. Dr. Acharya has relied various case in support of his arguments which have been referred in previous paragraphs. As against this Shri Shah, Advocate for the applicants argued emphatically that there is no conflict at all between the rival marks as the suffix are different on both the marks.
15. I have carefully considered the contentions of both the parties and also referred the decided cases cited by both of them before me, I am impressed with the arguments of the opponents that the marks to be compared as a whole by overall impression created by them. In the light of the foregoing, having found that there is an apparent conflict between the rival marks, I sustain the opponents objection under Section 12(1) of the Act.
16. Lastly I take up opponents objection under Section 18(1) of the Act. This objection of the opponents is based on the premises that they are the bona fide adopter of trade mark NEOPEPTINE and obtained registration. Any subsequent use of the same or similar trade mark by the applicants is tainted with dishonesty. The applicants in their reply submit that they have adopted their trade mark after conducting a thorough market survey. However it is not clear whether the applicants before adopting their trade mark obtained a search report under Rule 24(1) of the Trade and Merchandise Marks Rules, 1959 to ascertain the presence of same or similar trade mark on record. In view of the fact that the opponents trade mark has got a statutory protection under Section 28 of the Act, I sustain the objection under Section 18(1) of the Act.
17. All the objections taken by the opponents goes in their favour hence I see no reason as to why I should exercise my discretion in favour of the applicants.
18. So to sum up opposition No. AMD-52503 is allowed and Application No. 553896 in class 5 is refused registration. It is hereby further ordered that the aforesaid applicants shall forthwith pay a sum of Rs. 300/- (Rupees Three Hundred only) as costs of these proceedings to the opponents.