1. On 12.5.1982, a label mark consisting of word 'MOLY' was applied for registration by the above named applicants in respect of 'medicinal preparations' in class 5 under application No. 389904 under the provisions of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The user of the impugned mark was claimed since March, 1981. Eventually, the application was advertised before acceptance in the Trade Marks Journal No. 913 dated 16.6.87 at page 2. M/s. Gufic Private Limited, Kabil Pore, Navsari, Gujarat and also Subhash Road - A, Ville Parle (East), Bombay-57, (hereinafter referred to as opponents) lodged a notice of their intention on Form TM-5 dated 11.9.1987 to oppose registration of the impugned trade mark 'MOLY' inter alia stating the grounds of opposition as follows:- (1) The opponents carry on an old, established business as manufacturers and merchants in (pharmaceutical and medicinal preparations) and they are proprietors of several trade marks in respect of the said goods. One amongst such trade marks is the trade mark 'MOL', which has been used by the opponents in respect of their aforesaid goods since the year 1977. The registration of the said trade mark under application No. 384721 dated 30.12.1981 in class-5 is awaiting.
(2) By virtue of long, continuous, open and extensive use throughout the country ever since the year 1977, intensified sales promotion and publicity and high standard of quality of goods, the said trade mark 'MOL' has become distinctive of and is exclusively identified with the goods of the opponents manufacture. Enviable reputation/valuable goodwill is, therefore, occurred to their said trade mark and their goods sold thereunder.
(3) The applicants under the impugned application No. 389904 are seeking registration of the trade mark 'MOLY' in respect of the same goods.
(4) The trade mark 'MOLY' is neither adopted to distinguish not capable of distinguishing the goods of applicants as the same is a common feminine personal name. Therefore, the impugned trade mark fails to qualify under Section 9 of the Act.
(5) In view of the established use and reputation associated with their trade mark 'MOL', the use of an identical or similar trade mark in respect of same goods by the applicants is calculated to facilitate and lead to deception and confusion and to pass off the applicants' goods as and for the goods of the opponents' manufacture and to lead an inference that the applicants and/or their goods are connected with the opponents in the course of trade, is not only detrimental to the opponents but also to the public at large, therefore, is contrary to the provisions of Section 11 of the Act.
(6) As the applicants have claimed a meagre user and as on the date of application, the mark has been used for a short period of only one year and two months, the applicants are not entitled for registration under the provisions of Section 12(3) of the Act.
(7) The applicants are not and never were the proprietors of the impugned mark as the title to, it had long been established by prior adoption and use by the opponents and therefore, the provisions of Section 18(1) of the Act, stand appear to the registration of the mark in favour of the applicants. Further, the user claimed by the applicants is not admitted by the opponents, in any case, alleged user is not bona fide as the adoption of the mark by the applicants is dishonest ab initio in view of prior adoption and use of their mark by the opponents.
(8) In any event, the registration of the impugned trade mark in favour of the applicants still cause embarrassment and is prejudicial to their business and is contrary to the provisions of Sections 9, 11, 12 and 18 of the Act.
3. In view of the grounds stated above, the opponents prayed the Registrar that the instant opposition No. MAS-2005 be allowed with cost and the impugned application be refused registration in exercise of his discretion vested in him under Section 18(4) of the Act.
4. The applicants, in their counter statement dated 19.5.1988 disagreed and disputed the allegations made in para 1, 2, 3 and 5 to 11 of notice of opposition terming the same as incorrect and calculated to mislead the Registrar. The applicants submitted that there is no prima facie identity or deceptive similarity between the applicants trade mark 'MOLY' and the opponents trade mark 'MOL' and as such there can be no conflict between the marks on the proper and reasonable application of the relevant provisions of the Act. They said that their trade mark 'MOLY' is distinctive and is used in respect of their product, which is schedule 'H' drugs and can be sold only on the prescription given by the registered medical practitioner. Hence, there is no question of deception or confusion and the impugned trade mark is eligible for registration, therefore, the grounds of opposition are totally frivolous, misconceived and unsustainable and do not disclose any valid reasons for denial to registration of the impugned trade mark 'MOLY'.
The applicants prayed that registration of the impugned application may be allowed in exercise of his discretion by the Registrar and present opposition be over ruled.
5. The opponents filed evidence in support of notice of opposition under Rule 53 by way of an affidavit dated 19.4.1989 of one P.C.Choksy, Director of the opponents company alongwith supporting documents marked as Exhibit 'A'. The applicants did not file any evidence as called upon vide this office letter No. TOP/1083 dated 3.5.1989.
6. Eventually, the matter was set down for hearing and first time the hearing was posted in the matter on 24.9.1998. The opponents as well as the applicants notified their intention to attend hearing by filing requests on Form TM-7 with prescribed fee under Rule 59 of the Trade & Merchandise Marks Rules, 1959. Final hearing notices calling upon the parties to attend hearing were served vide this office Nos.TOP/8887 and TOP/8888 dated 9.10.2001. Ultimately, the matter came up for final hearing before me on 22,11.2001, when none appeared for hearing.
However, the opponents' attorneys Inter Continental Trade Mark Bureau vide their letter dated 29.10.2001 submitted that due to indifferent health of the advocate, who is well acquainted with the facts of the case and is to attend hearing is not able to commute a long journey at this stage, therefore, the case be decided on material available on record. The matter thus, was concluded on the same day accordingly. I reserved my order and decision thereon.
7. As summarized in para 11 of the notice of opposition, the objection raised by the opponents came within the provisions of Sections 9, 11(a), 12 and 18(1) of the Act. I will examine the aforesaid objections one by one, but for the sake of convenience, I would like to take up the opponents' objection raised under Section 12 of the Act, first.
8. The opponents trade mark 'MOL' which was stated to be a pending registration before the Registrar under application No. 384721 in class-5 (J/888) in the notice opposition stands duly registered as on the date of hearing and conclusion of the case. Moreover, the opponents are prior in adoption and use of the mark and in applying for registration.
9. Section 12(1) of the Act prohibits in specific terms, the registration of trade mark which is likely to deceive or cause confusion by virtue of similarity of trade marks already registered in the name of a different proprietor in respect of same goods or goods of the same description.
10. The opponents' matter is based on their trade mark 'MOL' registered under No. 384721 in respect of "pharmaceutical and medicinal preparations" in class-5. The applicants' trade mark is 'MOLY' which is sought to be registered in respect of "medicinal preparations" in the same class. Prima facie, the goods in respect of which the impugned mark is sought to be registered are identical to those for which the opponents' said trade mark is duly registered. However, the question whether the impugned trade mark is deceptively similar to the opponents' said trade mark 'MOL' or not is yet to be decided.
11. It has been repeatedly emphasized in various decisions that the question whether the mark is likely to give rise to confusion or not is a question of first impression. Ultimate conclusion will depend upon the various factors including the nature and purpose of the goods, class of customers, trade channels, etc. Each case must be decided on its own facts. Decided cases are, therefore, of little assistance in determining the question of deceptive similarity in a particular case.
They are useful only in so far as they laid down any general principles. Amritdhara Pharmacy v. Satya Deo, AIR 1963 SC 449 at 452; Coca Cola Co. v. Pepsi-Cola (1942) 59 RPC 127 at 133. It is well recognised that in deciding the question of similarity between two marks, the marks have to be considered as wholes. When comparing two words, it is not right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole.
12. The rules of comparison of the marks have been enunciated by Justice Parker in Pianotist application case: "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 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 marks. If, considering all those circumstances, you come to the conclusion that there will be 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 confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case." 13. Further, in Aristoc case, Luxmoore LJ observed : "The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants." 14. In Section 2(1)(d), the definition of expression 'deceptively similar' lay down :- "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark has to be likely to deceive or cause confusion." 15. The "true test", as observed by Sargant, J. "is whether the totality of the proposed trade mark is such that it is likely to cause mistake or deception, or confusion, in the minds of persons accustomed to the existing trade mark." 16. In the opponents' case, the three letters constitute the trade mark 'MOL' and in the case of the applicants, the trade mark 'MOLY' is comprised of four letters. In both the rival trade marks, the prefix 'MO' is common. As regards the suffix, it is 'L' in the opponents' trade mark and 'LY' in the applicants' trade mark. Further, in the rival trade marks the prefix is same and the suffix is also almost same with a minor difference of letter "Y", which hardly makes any difference while comparing the trade marks under Section 12(1) of the Act. Further more, the opponents' trade mark 'MOL' as a whole is covered under the impugned trade mark 'MOLY' and thus, the applicant's trade mark is visually, phonetically and structurally same as the opponents' mark except a little difference of letter "Y', which in my opinion is not capable to stop deception or confusion. Although, the applicants' product being schedule 'H' drugs may be sold on the prescription given by Registered Medical Practitioner, however, the marks are indistinguishable and the deception or confusion is still likely to be occurred even in hospitals and among the chemists and druggists.Cadila Health Care Limited v. Cadila Pharmaceutical Limited, 2001 PTC (21) 300(SC) directed the lower Court Vadodara for expeditious disposal of the pending suit on certain guidelines on the basis of case laws referred to therein. A few of those are as follows:- 18. In Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc. 25 USPO 2"d, 1473 (TTAB 1993). Confusion and mistake, "is likely even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed and marks which look alike and sound alike".
"Physicians and pharmacists are knowledgeable in their fields does not mean they are equally knowledgeable to marks and immune from mistaking one mark from another". [Schering Corporation. v. Aha Corporation, Repotted in 207 USPQ 504 (TTAB1980)] 19. In American Cynamid Corporation v. Connaught Laboratories Inc., 231 USPQ 128 (Td Cir.1986). "Exacting judicial scrutiny is required if there is a possibility of confusion over marks on medical products because the potential harm may be far more dire than that in confusion over ordinary consumer products".
20. In Supra Case, it is held that "Physicians are not immune from confusion or mistake. Further more, it is common knowledge that many prescriptions are telephoned to the Pharmacist and others or handwritten and frequently handwriting is not unmistakably legible.
These facts enhance the chances of confusion or mistake by the pharmacist in filing the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced.
21. "It seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of registration of trade marks to assure that no harmful confusion results." Campbell Products, Inc. v. John Weyth & Bros. Inc., 143 F. 2d 977, 979, 31 CCPA 1217 (1944).
22. Having regard to the well settled rules of comparison of trade marks and having other factors in view such as nature of marks and goods, trade channels, etc., and in view of the fact that the marks are to be compared as wholes, the impugned trade mark is held deceptively similar to the opponents' trade mark. I do not agree with the contention of the applicants that their trade mark is different from the opponents' trade mark and that there is no prima facie identity or similarity between the rival trade marks and as such, there can be no conflict between the marks. The objection raised under Section 12(1) by the opponents' is, therefore, sustained.
23. Next, I will take up the opponents' objection raised under Section 11 of the Act. The objection taken under Section 11(a) is apparently based on the use and reputation of the opponents' trade mark 'MOL'. It is well settled that when an opposition under Section 11(a) is based on the alleged use and reputation of the Opponents' trade mark, before the objection can be sustained, it is necessary for the opponents to establish a reputation in trade in connection with the said mark, before the Tribunal or Court will proceed to consider whether having regard to that reputation the possibility of confusion upon reasonable user of the mark applied for will arise as held in Arthur Fairest Application (1951) 68 RFC 179 at page 207 and Haya Kawa Electricity Co.
Ltd. v. Associated Electricals, (1974) 1 MLJ 392. Reputation is a question to be established by evidence. The reputation required is that of a mark or name used in relation to some goods or business; in other words the mark or name is known to a large number of persons as connected with certain goods or business. The burden of proof is on the person, who alleges reputation. The material date for establishing is the date of application for registration. Since the right of the parties are to be determined as on that date. It is held in Pan Press Case (1948) 65 RPC 193 at page 197. Keeping these time tested and well established legal principles in mindset me consider whether the opponents have discharged the preliminary onus cast upon them and established the use and reputation of their mark as claimed.
24. The opponents have filed evidence in support of opposition by way of an affidavit of one Pannalal Sundarlal Choksy, Director of the opponents company alongwith supporting documents marked as exhibit 'A'.
In para 6 of the said affidavit, the opponents have affirmed and stated that the annual sales turnover of their product sold under their trade mark from the year 1977 to 1987. In para 8 of the said affidavit, the opponents have stated and affirmed that the trade mark 'MOL' has been popularised by the opponents by means of advertisements of the mark in medical journals by personal contacts, trade discounts, distribution of literature and free samples of the product from 1977 up to the present time and a sum of Rs. 2,50,000/-(app.) has been spent to boost the sales of the products under the trade mark 'MOL'. Exhibit 'A' are xerox copies of representative character of the invoices (bill vouchers) which corroborate the annual sales turnover earliest from 20.10.1977 onwards. On the other hand, the applicants have not filed any evidence in support of their application and did not rebut the evidence filed by the opponents under Rule 53 and the same as such remained unrebutted.
It proves that the applicants have admitted all averments, allegations and claims made by the opponents. Thus, the opponents have discharged the onus cast upon them and have established the use, and reputation of their trade mark 'MOL' as claimed.
25. As on the date of application, the applicants do not have the sufficient user of the mark. However, the user, whatsoever claimed since 19.3.1981 by them has not been proved and thus, they totally failed to make out a prima facie case of registration under Section 12(3) of the Act. Moreover, the adoption of the trade mark by the applicants being subsequent is held as false and dishonest, which ipso facto is not entitled for protection in the court of law under Section 11(e) of the Act. However, in case of objection raised under Sections 11(a) and 12(1) of the Act, the applicants are ultimately, responsible to convince the Tribunal that the impugned mark is not deceptively similar to the opponents' trade mark and they entitled to registration.
The objections raised by the opponents under Section 11 is, therefore, sustained.
26. Now, I will proceed to examine the opponents' next objection raised under Section 9 of the Act. While invoking Section 9, the opponents alleged that the trade mark 'MOLY' in its ordinary significance is a common feminine personal name and for this reason the mark does not qualify for registration within the meaning of Section 9 of the Act. I do agree with the contention of the opponents and say that the mark 'MOLY' being a common feminine personal name, is neither adopted to distinguish, nor capable of distinguishing the applicants' goods.
However, the mark is already held deceptively similar to the opponents' trade mark 'MOL', therefore, the same within the meaning of the test of acquired distinctiveness is not incapable of application to the goods of the opponents. Therefore, the objection raised under Section 9 of the Act is sustained.
27. Finally, I pass on to the opponents' objection raised under Section 18(1) of the Act. In this objection, the opponents have contended that the applicants are not and were never the proprietors of the trade mark. The proprietary rights in a trade mark can be acquired in any of the following modes :- (1) By honest adoption and use of the mark, (2) By registration, (3) By transfer of a statutory right in at trade mark.
The adoption of the impugned trade mark by the applicants being subsequent is held as false and dishonest, therefore, the applicants in no way can be termed as proprietors of the mark within the meaning of Section 18(1) of the Act. On the other hand, the opponents have established the use and reputation of their mark since the year 1977 and they are the registered proprietors of the same. I do not find any reason as to why they should not be held the proprietors of the mark.
The objection raised by the opponents under Section 18(1) of the Act, is therefore, sustained.
28. At last, I am called upon to exercise the discretion vested in me under Section 18(4) of the Act. Having sustained the opponents' objections under different Sections, I find no reason to exercise my said discretion adversely to the opponents. I am satisfied that the opponents have been using the trade mark 'MOL' since the year 1977 and they are the registered proprietors of the same under No. 384721 as of 30.12.1981 and vested with statutory exclusive right in the trade mark under Section 28 of the Act and they have filed the present opposition for the right cause and justice.
29. In view of the foregoing, Opposition No. MAS -2005 is allowed and application No. 389904 in class-5 is refused registration.
30. It is hereby further ordered that the applicants shall forthwith pay the opponents a sum of Rs. 305/-(Rupees Three Hundred Five Only) as costs of these proceedings.
31. Signed and sealed at this Trade Marks Registry, Chennai Branch on this 28th day of October, 2002.