Walter Bushnel Pvt. Ltd. Vs. Mankind Pharma Pvt. Ltd. and Another - Court Judgment

SooperKanoon Citationsooperkanoon.com/1117373
CourtIntellectual Property Appellate Board IPAB
Decided OnOct-31-2013
Case NumberORA/152 of 2008/TM/DEL & M.P.No.125 of 2013
JudgeK.N. BASHA, CHAIRMAN & THE HONOURABLE MR. V. RAVI, TECHNICAL MEMBER (TRADE MARKS)
AppellantWalter Bushnel Pvt. Ltd.
RespondentMankind Pharma Pvt. Ltd. and Another
Excerpt:
trade marks act, 1999 - sections 47, 57 and 125 -order:- (236 of 2013) k.n. basha, chairman the applicant has come forward with this application for the relief of removal of the trade mark and rectification of the register under sections 47, 57 and 125 of the trade marks act, 1999 (hereinafter referred to as the ‘act) in respect of the registration no.1309918 in class 5 of the trade mark (drotkind-m) by expunging the entry from the register. 2. both the applicant as well as the first respondent are engaged in the manufacture of the medicinal preparations and its sale. 3. the applicant, a private limited company is engaged and dealing with the manufacture and sale of medicinal and pharmaceutical preparations. the case of the applicant is that they coined and bona fidely adopted the trade mark ‘drotin‘ in respect of the.....
Judgment:

ORDER:- (236 of 2013)

K.N. Basha, Chairman

The applicant has come forward with this application for the relief of removal of the trade mark and rectification of the register under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (Hereinafter referred to as the ‘Act) in respect of the registration No.1309918 in Class 5 of the trade mark (DROTKIND-M) by expunging the entry from the register.

2. Both the applicant as well as the first respondent are engaged in the manufacture of the medicinal preparations and its sale.

3. The applicant, a private limited company is engaged and dealing with the manufacture and sale of medicinal and pharmaceutical preparations. The case of the applicant is that they coined and bona fidely adopted the trade mark ‘DROTIN‘ in respect of the medicinal preparations in February, 1997 and obtained registration on 3.2.1997 under No.732349 in Class 5. The drug licence was obtained for the manufacture of medicinal preparations under the trade mark “DROTIN” as per the drug licence dated 2.4.1997 issued by the State Drug Controller for the manufacture and sale of medicinal preparations in respect of the coated tablets containing Naptha (Dhydro Eithereine Chloride) as an active ingredient. The applicant has used the trade mark “DROTIN” continuously, extensively and exclusively right from April, 1997 and acquired immense reputation and goodwill. The trade mark “DROTIN” has acquired distinctiveness. The applicant sought for cancellation and expunging the impugned trade mark of the first respondent by raising the following grounds:

(a) The adoption and use of the trade mark DROTIKIND-M and DROTIKIND-80 by the respondent in relation to pharmaceutical preparations which are identical and/or deceptively similar to the trade mark DROTIN is dishonest, mala fide, tainted and in bad faith. The use of said mark amounts to violation of the common law as well as statutory rights of exclusive use of the applicant and constitutes infringement of trade mark registration No.732349 of the applicant under Section 29 (1) of The Trade Marks Act, 1999. The use of the impugned marks DROTIKIND-M and DROTIKIND-80 by the respondent No.1 in relation to medicinal preparations is likely to lead to confusion and/or deception amongst the members of the public, doctors, chemists and the members of the trade on account of their deceptive similarity with the trade mark DROTIN of the applicant. The use of the impugned marks DROTIKIND-M and DROTIKIND-80 with or without any suffix by the respondent in relation to their medicinal and pharmaceutical preparations is likely to induce the members of the public, pharmacists and doctors to believe that the formulations of the respondent originate from the applicant which is a misrepresentation leading to passing off of the respondents goods and/or business as and for those of the applicant. The whole of applicants mark is adopted and used as a prefix by the respondent in the impugned marks.

(b) The respondent No.1 had known about the prior adoption, use and registration of the trade mark “DROTIN” in favour of the applicant since 1997 and in any event at least since 2005. The suit for perpetual injunction to restrain infringement and passing off was filed by the applicant against Respondent No.1 in the Year, 2005. In the suit filed by the Respondent No.1 in October, 2005, reference and reliance on the registered trade mark “DROTIN” under No.732349 in Class 5 was also made by the applicant. Having known these facts, the Respondent No.1 obtained registration of impugned mark in bad faith.

(c) The application for Registration of “DROTIKIND” of respondent No.1 apparently was advertised in the Trade Marks Journal in contravention of the provisions of the Trade Marks Act, 1999 and the Rules framed thereunder. The registration and use of the mark “DROTIN” of the applicant was over seven years old when the impugned application was made by the respondent to register “DROTIKIND”. The registration of the impugned mark was obtained and made violative of provisions of Section 11 of the Act. The registration of the impugned mark was obtained by suppression of material facts. Therefore, it is an entry wrongly made and made without sufficient cause and continues to exist without sufficient reasons on the register.

(d) The Application No.1309918 was ordered to be Advertised Before Acceptance under the provisions of Section 20 (1) proviso. The advertisement of the mark before acceptance itself show that the Registrar considered the impugned mark to be prohibited from registration in view of section (1) and (2) of Section 11. From the date of the application till the date of the order passed under Section (1) proviso and the date on which the registration was made, there was no change of circumstances or sufficient material to overcome the absolute bar created to the registrability of the impugned mark or the bar created under Section 11 of the Act. The entry relating to the registration of the impugned mark was thus wrongly made and is wrongly remaining on the register.

(e) The entry relating to registration of the impugned mark was also wrongly made in contravention of the provisions of Section 23 of the Act.

(f) The entry made in December, 2005 of the above mentioned trade mark in the Register has been made without sufficient cause and is an entry wrongly remaining on the Register.

(g) The impugned registration was obtained and made contrary to the provisions of Sections 11, 11 (a), 11 (1) (b), 11 (2) (a), 11 (3) (a) of the Trade Marks Act, 1999 (“The Act”), and it continues to violate the said provisions at the date of the present application, on account of prior acknowledged adoption, use and registration of a near identical mark “DROTIN” by the applicant.

(h) The respondent No.1 is not the proprietor of the impugned mark “DROTIKIND”. False claims to the proprietorship of the said mark were made by the respondent while seeking registration thereof and/or filing of the mark application for registration on 20.9.2004. As per Respondent No.1s own admission, the goods under the impugned mark were not manufactured by it but manufactured by Windias Biotech Limited. The Respondent No.1 could not make a claim to the proprietorship of the mark under the provisions of law, as applicable.

(i) The applicant are ‘persons aggrieved by the impugned registration under Section 57 of the Act, as the applicant are prior adopters and proprietors of the trade mark “DROTIN” under registration No.732349 in class 5 dated 3rd February, 1997 and prior users since 1997.”

4. The first respondent has filed their counter statement denying the averments, contentions and allegations made by the applicant. It is stated in the counter statement that the trade mark “DROTIKIND” was adopted and in continuous and exclusive use from the year 2004. The respondent has got statutory right to the exclusive use of the said trade mark by virtue of its registration thereof. It is stated that the respondent trade mark “DROTIKIND” is distinctive and has been continuously and extensively used since the year 2004 and acquired immense goodwill and reputation. There is no chance of any confusion or deception among members of the trade or public. The medicinal preparations under the trade mark “DROTIKIND” is being manufactured by M/s. Windias Biotech Limited under a valid drug licence and the products under the mark “DROTIKIND” marketed by the respondent. The respondents trade mark “DROTIKIND” is structurally, visually and phonetically dissimilar to the applicants trade mark “DROTIN”. The first respondents trade mark was published in the Trade Marks Journal dated 30.3.2005 and the same has been registered unopposed and despite opportunity, the applicant did not oppose the same. It is further stated that the applicant has obtained drug licence for manufacture and sale of medicinal preparations under the trade mark “DROTIN” in respect of coated tablets containing Naptha (ISI) as an active ingredient. The said contention has been averred with mala fide intention in order to mislead/prejudice this Honble Board that the applicant has not adopted the mark “DROTIN” from common ingredient DROTAVERINE HYDROCHLORIDE whereas Dhydro Eithereine Chloride is commonly known as DROTAVERINE HYDROCHLORIDE and from the same ingredient the applicant has adopted the mark “DROTIN” i.e. from the word DROTAVERINE.

That the respondents trade mark “DROTIKIND” is registered with effect from 20.09.2004 and even registration certificate in this regard has been issued by the Ld. Registrar of Trade Marks (respondent No.2) on 15.12.2005 and admittedly during such period litigation between the parties was pending but the instant application has been filed on 07.07.2008 i.e. after more than 3 years 9 months from effective date of registration and even after more than 2 and ½ years from the date of issuance of registration certificate. Thus the instant application is liable to be dismissed on this ground alone as it is filed after long delay and laches.

5. In support of the application for rectification, the applicant filed documents viz., Exhibit - “A” copy of the application for registration of the trade mark “DROTIN” under Number 732349 in class 5 dated 3.2.1997.

Exhibit - “B” copy of the Drug Licence dated 2.4.1997

Exhibit - “C” copy of the Chartered Accountant Certificate reflecting the sale dated 25.6.2008 DROTIN.

Exhibit - “D” copy of the certificate of registration of the applicant trade mark DROTIN dated 26.12.2003.

Exhibit - “E” copies of the invoices reflecting the sales of DROTIN range of products for a period from April, 1997 to March,2008.

Exhibit - “F” Legal Notice dated 19.4.2005 served on the Windias Biotech Limited.

Exhibit - “G” copy of the plaint in Suit No.87 of 2005 filed by the first respondent against the applicant seeking for the relief of declaration and permanent injunction and in the said suit the first respondent submitted that the goods bearing trade mark “DROTIKIND” were being manufactured by Windias Biotech Limited for the first respondent and the same were being marketed by the first respondent being the owner of the trade mark.

Exhibit - “H” are coloured photographs of the products under the impugned trade mark “DROTIKIND-M” and “DROTIKIND-80” (front and back views).

Exhibit - “I” are coloured photographs of the products under the trade mark DROTIN (front and back views).

Exhibit - “J” copy of the plaint in suit No.180 of 2005 filed on the file of the Delhi Court by the applicant against the first respondent and Windia Biotech Limited.

Exhibits - “K and L” copies of the applications filed for restoration and condonation of delay for suit No.180 of 2005 was dismissed for default.

Exhibit - “M” Restoration order dated 15.2.2008 restoring the suit in O.S.No.180 of 2005.

Exhibits - “N and O” Application for registration of trade mark by the first respondent and the certificate of registration of trade mark No.1309918 in Class 5 was advertised.

Exhibit - “P” copy of the order dated 12.11.2007 passed by the IPAB.

Exhibit - “Q” copy of the order passed by the Deputy Registrar, Trade Mark in Opposition No. CAL – 208384.

6. The first respondent in support of their claims filed documents Exhibits - “B-1 to B-68” (series) the first respondent trade mark with suffix “KIND” along with copy of the registration certificate. Exhibit – “C” the first respondent trade mark with suffix “KIND” out of which some are registered and some pending for registration. Exhibit - “D” sales figures of the first respondent. Exhibit- “E” sales figures of the medicinal preparations under brand “DROTIKIND”. Exhibit - “F” Sales figures of the medicinal preparations under Brand “DROTIKIND” of the first respondent group of companies viz., M/s. Life Star Pharma Private Limited. Exhibit - “G” copy of the deed of agreement between the first respondent and its group of companies M/s. Life Star Pharma Limited. Exhibits- “H-1 to H-13”(series) copies of the invoices. Exhibits - “I-1 to I-314”(series) sales invoices. Exhibits- “J-1 to J-174”(series) Sales invoices of the first respondent group of companies M/s. Life Star Pharma Private Limited. Exhibits - “K-1 to H-37”(series) copies of the advertisement of the trade mark “DROTIKIND” in Medical Trade Magazines and Journals. Exhibits- “L-1 to L-27”(series) copies of sales promotional materials. Exhibit - “M” copy of trade mark Journal dated 30.3.2005.

Exhibit - “M-1” copy of Drug Licence. Exhibit - “N1 to N 4” copies of packages to third party. Exhibit - “O” copy of cash bills in respect of purchase of medicines to third parties with prefix “DRO”. Exhibit - “P” copy of first respondent carton. Exhibit - “Q” copy of applicant carton.

7. Mr. Amarjit Singh, the learned counsel appearing for the applicant had taken us meticulously through the documents relied on by the applicant in support of their contentions Exhibits “A” to Exhibits “Q” and vehemently contended that the impugned trade mark of the first respondent was wrongly made and it had wrongly remaining on the register and as such the same is liable to be expunged from the register and put forward the following submissions:-

(i) The applicant is prior in adoption and use of the trade mark “DROTIN” in respect of same description of goods for which the registration of the impugned mark was obtained by the Respondent No.1.

(ii) The applicant is the prior registered proprietor of trade mark “DROTIN” by virtue of registration No.732349 dated 03.02.1997 (Ex. A and D).

(iii) The Applicant has produced the Drug Licence dated 02.04.1997 for the manufacture of the product under the trademark “DROTIN” containing chemical compound called “Naptha (ISI Dhydro Ethavesine Chloride)” (Ex.B). The Applicant has also filed the certificate from the Chartered Accountant showing the sales of “DROTIN” from the year 1997-98 (Ex. C) along with copies of invoices from 28.05.1997 onwards (Ex. E). These documents clearly establish prior adoption prior use and prior registration of applicants trademark “DROTIN” in class 5.

(iv) The applicant sent legal notice dated 19..4.2005 to Windias Biotech Limited who is the manufacturer of goods for first respondent under the impugned mark to desist from using the trade mark “DROTIKIND” and on receipt of such notice the first respondent filed a suit for declaration and permanent injunction before the District Court, Delhi in Suit No.87 of 2005 and the said suit was dismissed for default by an order dated 12.5.2006. In the said suit, the same issue was raised and the first respondent in spite of affording sufficient opportunity failed to produce any evidence nor deposit the costs and as such the suit was dismissed under Order XXVII Rule 3 of Code of Civil Procedure and read with Order IX Rule 9 and as such the first respondent is estopped from reagitating the same issue in this matter. The order of dismissal in the suit reached its finality as the first respondent neither filed any application for restoration nor filed any appeal against the order of default dated 12.5.2006.

(v) In the counter statement, the respondent No.1 has made specific averments inter alia in paragraphs 3 and 4 that the word “KIND” is used as suffix. Similar plea was taken by the Respondent No.1 in the suit for declaration, which stood dismissed on 12.5.2006. The case of the respondent No.1, even if taken on its face value, proceeds on the basis that the word “KIND” is only a suffix to the word “DROTI”. The comparison of the “DROTIN” and “DROTI” clearly shows the identity of the competing marks. The addition of any prefix and/or suffix to the earlier mark is of no consequence in the eyes of law for the determination on the question of deceptive similarity.

(vi) As per the respondents own admission, the essential features of the registered trade mark under No.1301198 is the word “DROTI” and word “KIND” plays the role of suffix. As per the decision of the Honble Supreme Court in AIR 1960 SC 100, the admissions are the best piece of evidence that opposing party can rely upon.

(vii) Be that as it may, or even otherwise the trademark “DROTIN” and “DROTIKIND” are deceptively similar to each other in view of the test of comparison as laid down by the Honble Supreme Court in the matter of Amirt Dhara Vs. Laxman Dhara (AIR 1963 SC 449).

(viii) The impugned mark was adopted by respondent No.1 only on 20.09.2004 with a claim of proposed use which is subsequent to the Applicant. The claims made by the Respondent No.1 to the proprietorship of the mark under Section 18 of the Act were false as the impugned mark was adopted by the Respondent No.1 mala fidely and dishonesrtly to trade upon the reputation of the Applicants well established and well known trademark “DROTIN”.

(ix) The justification which was sought to be given by the Respondent No.1, for adopting the mark “DROTI” from the name of the chemical compounds is devoid of any merit.

(x) In the present proceedings, this Honble Board is considering the invalidity of the trademark “DROTIKIND” under No.1309918. The registration of trademark “DROTIN” under No.732349 is not the subject matter of any challenge in the present proceedings.

(xi) In view of the admissions made by the Respondent No.1 in the pleadings and during the course of arguments it is established that the impugned mark was neither distinctive on the date of the application for registration nor distinctive on the date of grant of registration i.e., 15.12.2005, nor distinctive on the date of the institution of the present Rectification Petition i.e. July, 2008 and thus the same is wrongly remaining on the register.

8.The learned counsel for the applicant would place reliance on the following decisions in support of his contentions:-

(i) In NARAYAN BHAGWANTRAO GOSAVI BALAJIWALE Vs. GOPAL VINAYAK GOSAVI and OTHERS (AIR 1960 SC 100 (Vol.47 C 18));

(ii) K.R.CHINNA KRISHNA CHETTIAR Vs. SRI AMBAL and CO. and ANOTHER (AIR 1970 SC 146 (Vol. 57 C.34));

(iii) K.R.CHINNIKRISHNA CHETTY Vs. K.VENKATESA MUDALIAR and ANOTHER (AIR 1974 MADRAS 7 (Vol.61 C.5))

(iv) RUSTON and HORNSBY LTD. Vs. THE ZAMINDARA (1970 (2) SCR 222);

(v) CIBA LTD. BASLE SWITZERLAND Vs. M. RAMALINGAM and S.SUBRAMANIAM (AIR 1958 BOMBAY 56 (Vol. 45 C. 21);

(vi) SANAT PRODUCTS LTD. Vs. GLADE DRUGS and NUTRACEUTICALS PVT. LTD. and ANOTHER (2003 (27) PTC 525 (DEL));

(vii) WIN-MEDICARE LTD. Vs. SOMACARE LABORATORIES (1997 PTC 17);

(viii) M/S.ASTRA-IDL LTD. Vs. TTK PHARMA LTD.(1992 PTC 137);

(ix) AMRIDHARA PHARMACY Vs. SATYA DEO GUPTA (AIR 1963 449 (Volume 50 C.63);

(x) The unreported order dated 23 June 2008 rendered by Bombay High Court in Writ Petition No.271 of 2008 in MAPRA Laboratories P. Ltd., Vs. Walter Bushness Pvt. Ltd. and 3 others)

(xi) NILA VS. PUNUN (AIR 1936 Lahore 385);

(xii) CENTUARY TRADERS Vs. ROSHAN LAL DUGGAR and CO. (AIR 1978 DELHI 250)

9. Per contra, Mr.Vikramjit Banerjee, the learned counsel for the first respondent would strenuously contend that the mark “DROTIKND” is not similar to that of the earlier mark “DROTIN” and that the applicant has not made out a case for the removal of the registered trade mark of the first respondent and put forward the following submissions;

(i) The suit filed by the first respondent was dismissed only on the ground of default and not on merits and as such the first respondent is not estopped from taking defence that his trade mark is not similar to that of the applicant trade mark. In support of such contentions, the learned counsel would place reliance on the decision of the Honble Supreme Court in SHEODAN SINGH Vs. SMT. DARYAO KUNWAR (AIR 1966 SCR (3) 300 : AIR 1966 SC 1332) – “Where an application has been advertised before acceptance under the proviso to Section 20 (1) of the Act the Registrar may in his discretion cause the application to be advertised again and therefore it is not mandatory that the application which is advertised before acceptance has to be advertised again by the Registrar has accepted for him to issue a registration certificate. Registrar has discretionary power which is exercised can result in issuance of registration certificate directly after being advertised before acceptance.”

(ii) No one can claim any proprietorship over any word that are in “publici juris” the word element “DROTI” is in “public juris” and not the mark “DROTIKND”. It is well established that marks are to be looked as a whole and what distinguishes the two marks from different source “DROTIN” and “DROTIKIND” are the distinguishing element or a suffix.

(iii) The applicant has not let in evidence to show that the actual confusion and or deception of the public and trade ever existed between the two mark of the Register “DROTIN” and “DROTIKIND”. The mark of the registered proprietor is distinctive and different from that of the applicant and deserves to remain in the register.

(iv) The drug licence of the applicant Exhibit “B” is not in the name of the applicant. The Chartered Accountant certificate Exhibit - “C” is also not in favour of the applicant and the invoices also in the name of M/s. Martin and Harris Laboratories Ltd.

10. The learned counsel for the first respondent in support of his contention would also place reliance on the following decisions:

(i) In CADILA HEALTH CARE LTD. Vs. CADILA PHARMACEAUATICALS LTD. {2001 PTC 300 (SC) };

(ii) In SCHERING CORPORATION and OTHERS Vs. ALKEM LABORATORIES LTD. (2010 (42) PTC 772 (Delhi) (DB);

(iii) In ASTRAZENECA UK LTD. and ANOTHER Vs. ORCHID CHEMICALS and PHARMACEUTICALS LTD. (2007 (34) PTC 469 (Delhi) (DB) and

(iv) In NOVARTIS AG Vs. WANBURY LTD. and ANOTHER 2005 (31) PTC 75 (Delhi).

11. Lastly, the learned counsel for the first respondent would contend that the decisions relied on by the applicant are not applicable to the facts of the instant case.

12. Mr. Amarjit Singh, the learned counsel for the applicant would further submit by way of reply that the submissions made by the first respondent that the word “DROTI” is descriptive/generic is self destructive of the respondents own case. If the said word is considered to be descriptive/generic by the respondent, then the violation of Section 9 of the Act in the grant of registration of impugned mark stands categorically admitted. The word mark stand “KIND”, being a suffix, makes no difference in the eyes of law.

13. It is further submitted that the challenge is only to the impugned trade mark “DROTIKIND” under No.1309918 and not the registered trade mark to the applicant “DROTIN” under No.732349. It is also further submitted that the trade mark “DROTIN” being earlier registered mark for pharmaceutical and medicines preparations, the registration of the impugned mark “DROTIKIND” was prohibited from registration under Section 11 of the Act.

14. The learned counsel for the applicant would further submit that during the course of arguments, an objection was raised by the Respondent No.1, concerning the evidence of use filed on record by the applicant on the plea that it does not belong to the registered proprietor. The plea raised by the respondent No.1 is misconceived as evidence has been produced on record by the applicant (Exhibit - “J”) in which it is categorically stated that Martin and Harris Laboratories Ltd. are manufacturing drugs under the trade mark “DROTIN” for and on behalf of Walter Bushnell Pvt. Ltd. under a permissive license. It is also pleaded that Martin and Harris Laboratories Ltd. adheres to all the strict quality standards stipulated and monitored by Walter Bushnell Pvt. Ltd., It is also the evidence on record that Martin and Harris Pvt. Ltd., is also marketing the goods under the trademark “DROTIN” under the licence of Walter Bushnell Pvt. Ltd., The Respondent No.1 is well aware of this aid fact. Furthermore, the suit for declaration being suit No.87 of 2005 (Exhibit-G) was filed by the respondent No.1 against Walter Bushnel Pvt. Ltd. in which references were made to the product “DROTIN” as manufactured by Martin and Harris Laboratories Ltd., on behalf of Walter Bushnel Pvt. Ltd. The applicant is entitled to rely upon the said evidence being evidence of its use under the law. Walter Bushnel Pvt. Ltd. being the registered proprietor of the trade mark “DROTIN” is entitled to get its goods manufactured through its licensees and to file the present Rectification Petition. Even the goods as being marketed by Respondent No.1 are manufactured by Windias Biotech Limited. Therefore, it is submitted that there is no basis for the above said contention of the first respondent.

15. We have given our careful and anxious consideration to the rival contentions put forward by either side and scanned through the entire materials available on record and perused the statement of the applicant, counter statement of the first respondent and the written submissions made by both sides.

16. The undisputed fact remains that both the applicant and the first respondent are engaged in the manufacture and sale of pharmaceutical and medicinal preparations and the applicant is the prior user i.e., from the year 1997 in respect of the trade mark “DROTIN” and their trade mark was registered earlier under trademark No.732349 dated 3.2.1997 and whereas the impugned trade mark ‘DROTIKIND” of the first respondent was adopted and registered only on 20th September, 2004 and that too on the basis of proposed use.

17. The crux of the question involved in this matter is whether the impugned trade mark “DROTIKIND” is deceptively similar to that of the trade mark of the applicant “DROTIN”?

18. In order to find out whether the impugned trade mark of the first respondent is deceptively similar to that of the trade mark of the applicant it is relevant to refer to the definition of “deceptively similar” as per the provisions of the Act. Section 2 (1) (h) of The Trade Marks Act, 1999 reads hereunder:-

“(h) " deceptively similar".- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”

The reading of the above said definition clause makes it crystal clear that the mark shall be deemed to be deceptively similar to another if it is LIKELY TO DECEIVE OR CAUSE CONFUSION. (Emphasis supplied by us). As far as the case on hand is concerned, we cannot ignore the fact that both the impugned trade mark and the trade mark of the applicant are in respect medicinal preparations and both the trade marks starts with the word “DROTI” and at the risk of repetition it has to be reiterated that the applicants trade mark is “DROTIN” and the first respondents impugned trade mark is “DROTIKIND”. It is pertinent to note only “KIND” is added in the impugned trade mark. Therefore, we have to necessarily consider the crux of the question involved in the instant case with the touchstone of the overall similarity, overall structure and phonetic similarity.

19. As rightly pointed out by the learned counsel for the applicant, the first respondent has specifically stated in paragraph 3 of the counter stated as hereunder:-

“It is pertinent to mention here that the word KIND as a suffix is being used in many trade marks of the respondent company and wherever the suffix KIND as a part of trade mark is used such trade marks which bear suffix KIND always identify and associate the said trade marks exclusively with the respondent and the members of trade and people easily identify that such trade mark with suffix KIND is having trade orientation from the respondent and none else.”

Therefore the above specific admission of the first respondent in its counter makes it abundantly clear that the word “KIND” is only a suffix to the word “DROTI”.

20. The learned counsel for the applicant has rightly placed reliance in the decision of the Honble Apex Court reported in AIR 1960 Supreme Court 100 (supra). In the above decision, in paragraph 11, the Honble Apex Court has held as hereunder:

“An admission is the best evidence that an opposing party can rely upon, and though not conclusive, is decisive of the matter, unless successfully withdrawn or proved erroneous”.

The principles laid down by the Apex Court in the decision cited supra is squarely applicable to the instant case in view of the specific admission of the first respondent as pointed out earlier as the word “KIND” is used as a suffix and therefore admittedly there is a striking similarity more particularly phonetic similarity between the trade mark of the applicant “DROTIN” and “DROTIKIND”.

21. The Honble Apex Court in AIR 1970 Supreme Court 146 (supra) has held in  Paragraphs 8 and 9 as hereunder:

“8. “Now the words “Sri Ambal” form part of trade mark No.126808 and are the whole of the trade mark No.146291. There can be no doubt that the word “Ambal” is an essential feature of the trade marks. The common “Sri” is the subsidiary part. Of the two words “Ambal” is the more distinctive and fixes itself in the recollecting of an average buyer with imperfect recollection.

9. The vital question in issue is whether, if the appellants mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks will there be such a likelihood of deception that the mark ought not to be allowed to be registered? (see in the matter of Brodheads Application for registration of a trade mark, 1950-67 RPC 209). It is for the Court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature “Andal”. There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks. “

22. The Division Bench judgment of the Madras High Court reported in AIR 1974 MADRAS 7 (Volume 61 C.5) (supra) has held in paragraph 19 as hereunder:

“19. Though at one stage we considered that the addition of the word 'Radha' to the legend 'Sri Andal' makes all the difference, after our attention was drawn to the three cases referred to above, viz., (1) relating to the Vicks Vaporub, where the objection to the registration of the respondents' Vaporub which infringed the appellants' registered mark was sought to be got over by adding a word 'karosote' to the respondents' legend, and (2) where the objection to the registration of the respondents' trade mark 'Rustam' was sought to be met by the addition of the word 'India' to the objected legend and (3) where the word "Bulova" was sought to be added to the legend "Accutron" which legend was held to infringe the respondents' trade mark "Accurist", we are persuaded to come to the opposite conclusion that the addition of the word 'Radha' to the legend 'Sri Andal' will not make the slightest difference and that the view of the learned Judge is correct. The appellants' snuff sold under the trade name "Sri Andal" the registration of which was objected to by the respondents, has been in the mark? finally upheld. The question for consideration now will be whether by the addition of the word 'Radha' to objected legend makes a vital difference. As observed by Stamp J. in 1969 RPC 102 AT P. 109, "Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion." We are of opinion that the combination of the two words "Radha's Sri Andal" is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as "Sri Andal". The appellants' learned counsel sought to distinguish the above three cases on the ground that in the aforesaid decision the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of the word 'Radha' to the legend 'Sri Ambal." We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that substantial number of persons will confuse the appellants' 'Radha's Sri Andal' mark applied for with the respondents' legend 'Sri Ambal snuff".

23. The Honble Apex Court in yet another decision in AIR 1963 449 Volume 50 C.63 (supra) it is stated as follows:

“That the question had to be approached from the point of view of a man of average intelligence and Imperfect recollection. To such a man the overall structural and phonetic similarity of the two names “Amritdhara” and ‘Lakshmandhara was likely to deceive or cause confusion. The overall similarity of the two composite words Amiritdhara and ‘Lakshmandhara had to be considered. It could not be said that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ‘current of nectar or ‘current of ‘Lakshman . Where the trade mark relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between ‘current of nectar and current of Lakshman. The use of the word ‘dhara was not by itself decisive of the matter, what had to be considered here was the overall similarity of the composite words, having regard to the composite words, having regard to the circumstances that the goods bearing the two names were medical preparations of the same description, though a critical comparison of the two names might disclose some points of difference. The trade mark is the whole thing – the whole word has to be considered. On a consideration of all the circumstances, the overall similarly between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of Section 10 (1) of the Act.”

24. The Honble Apex Court in 1970 (2) SCR 222 (supra) held as hereunder:-

“For the infringement of its registered trade mark “RUSTON” by the respondents trade mark “RUSTAM”, the appellant filed a suit for permanent injunction. The respondent pleaded that “RUSTAM” was not an infringement of “RUSTON” and stated that the words “RUSTAM INDIA” were used. The trial court dismissed the suit holding that there was no visual or phonetic similarity between “RUSTON” and RUSTAM”. The High Court in appeal, held that there was deceptive resemblance between the words “RUSTON” and “RUSTAM”, but held that the use of “RUSTAM INDIA” did not constitute an infringement because the appellants engines were manufactured in England and the respondents in India, and the suffix “INDIA” was sufficient warning that the engine sold was not the engine manufactured in England.

In the present case the High Court has found that there was deceptive resemblance between the word RUSTON and the word ‘RUSTAM and therefore the use of the bare word ‘RUSTAM constituted infringement of the appellants trade mark ‘RUSTON. The respondent did not prefer an appeal against the judgment of the High Court on this point and it is, therefore, not open to him to challenge that finding. If the respondents trade mark deceptively similar to that of the appellant the fact that the word ‘INDIA was added to the respondents trade mark was of no consequence and the appellant was entitled to succeed in its action for infringement of its trade mark.”

The principles laid down by the Honble Apex Court in the decision cited supra is squarely applicable to the facts of the instant case. In the instant case, the question is whether the impugned trade mark “DROTIKIND” is deceptively similar to that of the applicant mark “DROTIN”. Merely because of the addition of suffix “KIND”, it cannot be contended that the impugned trade mark “DROTIKIND” is not deceptively similar to the applicants trade mark “DROTIN”.

25. The Honble Bombay High Court in AIR 1958 BOMBAY 56 (Volume 45 C.21) (supra) at paragraph 4 held as hereunder:

“4. Now, there is no doubt on the record that the word 'Ciba' forms the dominant part of the name of the appellants and their subsidiary companies. It has been registered in every civilised country in the world and has been widely used during the past 40 years and more. It seems also to be fairly well established that the word 'Ciba' has come to mean throughout the world the product of the appellants. If that is so, then if the word 'Cibol' which has been used by the respondents for their pharmaceutical preparations resemble the word 'Ciba' and if 'Ciba' was already registered, then it seems to be clear that the subsequent registration of the word 'Cibol' does not seem to be justified in law.”

26. In 2003 (27) PTC 525 at page 532 (DELHI) (supra) the Delhi High Court held as under:

“As noticed both the trademarks “REFIRM” and “REFORM” are visually, conceptually and phonetically resemble each other and there can be possibility of a mistake of identifying one for the other on the part of the doctors and nurses who are not immune from mistake and cannot be said infallible and the chemists and dispenser who may make bona fide mistake in reading the prescription of the doctor and supply the medicine of the defendant for the medicine of the plaintiff asked for and vise versa.”

27. The Delhi High Court in 1997 PTC 17 (supra) at paragraphs 7 to 10 and 23 has held as hereunder:

“This material prima facie shows that the plaintiff had adopted the trade mark DICLOMOL in respect of pharmaceutical and medicinal product "Dielofenac Sodium and Paracetamol" in the form of tablets in the year 1988; the sale of the product under the trade mark DICLOMOL was started on 25th July, 1989. The plaintiff claims to have incurred expenditure amounting to Rs. 92 lacs towards publicity of this product and their sales of this product have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994. Prima facie this material shows that the plaintiff is the actual user of the trade mark DICLOMOL since 1989.

8. Only defendant No. 1 is contesting the suit. As already noticed the case of the defendant No. 1 is that defendant No. 2 is manufacturing the product while defendant No. 1 is selling their product under the trade mark of DICMOL since November 25, 1992.

9. It is thus the plaintiff who had adopted first and is the prior user of the trade mark DICLOMOL in respect of the aforesaid medicinal preparations.

10. Now the question is whether the trade mark DICMOL of defendant is identical or deceptively similar to that of the plaintiff's mark DICLOMOL.

The Delhi High Court by placing reliance on other decisions including the decision of the Honble Apex Court in Amridharas case had held:

“23. In the present case, the two marks are used in respect of the same of similar medicinal preparations, overall, pattern of the cartons used are similar. Both the marks are in capital letters of same size, shape and colour and are identical except the extra syllable 'LO' in plaintiff's mark. There is not much emphasis on this syllable in pronunciation. They have thus overall structural and phonetic similarity and therefore, likely to cause confusion and deception to a man of average intelligence and of imperfect recollection, the medicinal product being used for alleviation of various ailments, will be purchased mostly by people in village and towns, literate as well as illiterate.”

28. In 1992 PTC 137 (supra) the Delhi High Court held as under:

“that in deciding whether the word Betalong is deceptively similar to the word Betaloc, each of the two words must be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both from visual and phonetic point of view. It is not a matter for microscopic inspection but to be taken from the general and even casual point of view of a customer. As the mark Betalong is too near and so similar to the mark Betaloc, the likelihood of confusion being caused cannot be ruled out. Applying the three-fold tests of phonetic, visual and structural similarity and the plaintiffs having made out a very strong prima facie case for grant of interlocutory reliefs as prayed for in the Notice of Motion, the Notice of Motion is made absolute as prayed for.”

29. It is pertinent to note that similar question of deceptive similarity was considered in respect of the case of the applicant mark particularly in respect of the trade mark of the applicant viz., “DROTIN” by this Board in ORA/93/2005/TM/MUM by an order dated 12.11.2007 and identical questions involved in the instant case were dealt with by the Board and held in favour of the applicant herein in the said case.

30. The said decision was upheld by the Bombay High Court in an unreported decision dated 23.6.2008 in the case of MAPRA Laboratories Pvt. Ltd. Vs. 1) Walter Bushnel Pvt. Ltd., and three others in Writ Petition No. 271 of 2008 in respect of the deceptive similarity. The Bombay High Court in the said decision held in paragraph 13 hereunder:

“13. The last ground was raised by the learned counsel for the petitioner is in respect of the phonetic similarity and dissimilarity of the trade marks DROT and DROTIN. However, this aspect of the matter has also been considered by the Appellate Board in paragraph 22 of its order and the Appellate Board has rightly concluded the phonetically both the trade marks are identical and, therefore, there is a violation of the provisions of section 11 (2 ) of the Act.”

31. As far as the case on hand is concerned, it has to be reiterated that the trade mark of the applicant “DROTIN” is prior in adoption and in use and the registration of the applicants trade mark was as early as on 03.02.1997 as per Exhibits “A” and “D” and on the other hand, the impugned trade mark “DROTIKIND” was registered only on 20.09.2004. In our view, the applicant is able to demonstrate by producing overwhelming documents to establish prior adoption, prior user and prior registration of applicants trade mark “DROTIN” in class 5. We are constrained to state that there is no material or documents to show that the impugned trade mark “DROTIKIND” has acquired distinctiveness more particularly admitted fact remains that they are only proposed user of the mark of the impugned trade mark.

32. We are also constrained to state that that the impugned trade mark was neither distinctive on the date of application for registration, distinctive on the date of grant of registration i.e., as on 15.12.2005 nor distinctive on the date of the institution of the rectification petition i.e., in the month of July, 2008 and such impugned trade mark was not only wrongly registered but also the same is wrongly remaining on the register.

33. We have already pointed out that both the impugned trade mark “DROTIKIND” and the trade mark of the applicant “DROTIN” are in respect of the medicinal and pharmaceutical preparations and considering overall features both the trade marks are visually, structurally similar and identical and as such it is likely to cause deception and confusion in the mind of the consumers. Considering the above said factors coupled with the touchstone of the principles laid down by the Honble Apex Court, we have no hesitation to hold that the impugned trade mark “DROTIKIND” is deceptively similar to that of the applicant trade mark “DROTIN.

34. The learned counsel for the first respondent also submitted that the drug licence is not in the name of the applicant. But it is evident from the documents Exhibit “J” produced by the applicant, it is categorically stated that the Martin and Harris Laboratories Limited manufactured drugs under the trade mark “DROTIN” for and on behalf of the Walter Bushnel Private Limited under a permissive licence. It is also pertinent to note that even in the suit O.S.No.87 of 2005 Exhibit – “G” filed by the first respondent against Walter Bushnel Private Limited references were made to the product “DROTIN” as manufactured by Martin and Harrish Laboratories Private Limited on behalf of the Walter Bushnel Private Limited. It is relevant to note that Walter Bushnel Private Limited being the registered proprietor of the trade mark “DROTIN” is entitled to get his goods manufactured through his licensees.

35. The learned counsel for the respondent also contended that the word “DROTIN” is descriptive/generic. The learned counsel for the applicant rightly contended that the said contention is self destructive of the respondents own case and the trade mark “DROTIN” of the applicant is not the subject matter of any challenge in the present proceedings.

36. Though the learned counsel for the applicant raised a technical ground to the effect that the application was advertised before acceptance under the proviso to Section 20 (1) of the Act and as such the Registrar has not yet applied his mind under Section 18 (4) of the Act, we are not inclined to go into such a hyper technical point.

37. Yet another contention of the learned counsel for the applicant is that the first respondent filed a suit in O.S.No.87 of 2005 (District Court, Delhi) and sought for declaration and permanent injunction to the effect that the first respondent is the proprietor of the impugned trade mark “DROTIKIND” and for declaration to the effect that the trade mark “DROTIKIND” in respect of medicinal and pharmaceutical preparations of the first respondent is entirely different from the trade mark “DROTIN” of the applicant and the said suit was dismissed for default under Order 17 Rule 3 of Code of Civil Procedure read with Order 9 Rule 9. It is contended that in the said suit issues were framed and the first respondent was granted an opportunity to lead evidence and in spite of the same he has not produced any evidence and ultimately the suit was dismissed for default on 12.05.2006. It is pointed out by the learned counsel for the applicant that the said order of the Civil Court was not challenged by the first respondent by preferring an appeal or any petition filed for restoration of the suit and as such the said order has become final and consequently the principle of res judicata is applicable.

38. The learned counsel in support of such contention placed reliance on the following decisions:-

(i)AIR 1936 Lahore 385 (supra);

(ii)AIR 1944 Oudh 39 (Har Dayal Vs. Ram Ghyuam);

(iii)AIR 2001 Karnataka 104 (Syed Mujibur Rahman Vs. Abdul Azeez) and

(iv)AIR 2004 Gujarat 83 (Geb through Secretary Vs. Saurashtra Chemicals)

39. The learned counsel would mainly placed reliance on the decision of the AIR 1936 Lahore 385(supra ) wherein it was held as hereunder:

“The suit was dismissed by the trial court, but on appeal the learned District Judge has remanded it for retrial. From this decision the present appeal has been preferred. It appears that a similar suit for declaration had been instituted by Kartar Singh, eldest brother of the present plaintiff, but was dismissed on 2nd June, 1926. The dismissal was under Order 17 Rule 3 Civil P.C. Kartar Singh having failed to produce evidence on the date fixed. Further opportunity to produce evidence was refused and the case was dismissed. No appeal was preferred by Kartar Singh and the decision in the previous suit thus became final.

The learned counsel for the appellant contends that the previous suit being of a representative character the decision therein was binding on the plaintiff and that though the case was decided under Order 17, Rule 3 Civil P.C., the decision is deemed to be on merits for the purposes of Section 11 Civil P.C., In support of his contentions the learned counsel for the appellant relied on 1929 Madras 404 (1). The view taken by the learned District Judge on the above point was that the previous decision was not on merits as Kartar Singh had failed to produce the necessary evidence and plaintiff who is a minor was bound by the previous decision. He pointed out that even if the plaintiff had instituted the previous suit through Kartar Singh as next friend he could have challenged the decision on the ground of gross negligence on the part of the next friend. The fact that a suit of the present type is of a representative character and any decision arrived at therein is binding on all the reversioners was not disputed by the learned counsel for the respondents, but he distinguished the present case on the ground that the plaintiff was a minor and he also adopted the argument of the learned District Judge that, if Kartar Singh had instituted the previous suit on behalf of the plaintiff who is a minor, the plaintiff could have maintained the present suit on the ground that Kartar Singh was guilty of negligence in conducting the previous suit.

The decision of the point at issue depends on the question whether Explanation 6 to Section 11, Civil Procedure Code applies to the circumstances of this case. According to that Explanation, when person litigate bona fide in respect of a public or private right claimed in common for themselves and others, all persons interested in such right shall, for the purpose of the section, be deemed to claim under the persons so litigating. Now, there can be no doubt that Kartar Singh was litigating in the previous suit in respect of a right common to all the reversioners. There is no suggestion that the previous suit was collusive, or that Kartar Singh was guilty or fraud. All that has been urged is that (i) Kartar Singh was guilty of negligence in not depositing the process fees in Court in time and (ii) that as a result there was no decision of the case on merits. As regards the first point, the facts were that Kartar Singh had made over diet money to his pleaders clerk but the latter decamped with it. The pleader on coming to know of this went to Court ten days before the hearing and deposited the process fees and diet money. But the Court refused to adjourn the case for want of service. The learned District Judge has himself remarked that the court was not justified in throwing out the case in such circumstances. This finding means that the learned District Judge was of the opinion that Kartar Singh had done all that could be reasonable expected and was not guilty of any negligence. And yet the learned District Judge went on to remark that, if Kartar Singh had instituted the previous suit as a next friend on behalf of the present plaintiff, the latter could have maintained the present suit on the ground that Kartar Singh was guilty of gross negligence. I do not see how these findings can be reconciled. The learned counsel for the respondent has cited 1926 Allahabad 36 (2) in which the terms ‘Negligence and gross negligence have been explained, with reference to a suit by a minor to set aside a decision in a previous suit on account of gross negligence on the part of his guardian. The test laid down for deciding what amounts to ‘negligence was the conduct of the average man in like circumstances and with like knowledge and means of knowledge. I do not see how Kartar Singh can be said to have been guilty of any negligence from the stand point of this test and, as pointed out above, the learned District Judge himself appears to have been of this opinion, judging from his remark that the previous suit should not have been thrown out. The question as to why Kartar Singh did not appeal from the decision in the previous case, was apparently not raised in the Courts below. He may have been advised that an appeal would not succeed, or may have had other good reasons for not appealing. In the absence of any allegation of proof of negligence in this respect, it is unnecessary to discuss this point.

As to the second point, viz., that the decision was not on merits, the ruling cited by the learned counsel for the appellant viz., 1929 Madras 404 (1) supports his contention that a decision under Order 17 Rule 3, Civil P.C., in circumstances like those of the previous suit by Kartar Singh, is to be deemed to be a decision on merits and such a decision falls within the scope of Section 11 Civil P.C., : of also 40 Allahabad 590 (3). In my judgment the decision of the trial court was correct, and the previous decision in the suit by Kartar Singh must be held to be binding on the present plaintiff.”

40. On the other hand, the leaned counsel for the first respondent would contend that the said suit was dismissed only on the ground of default and not on the ground of merits and as such the principles of res judicata are not applicable. In support of the said contention, the learned counsel for the first respondent placed reliance on the decision of the Honble Apex Court in SHEODAN SINGH Vs. Smt. DARYAO KUNWAR AIR 1966 SCR (3) 300.

41. It is relevant to refer Order XVII Rule 3 of C.P.C. reads hereunder:

“Court may proceed notwithstanding either party fails to produce evidence, etc. – Where any party to a suit to whom time has been granted fails to produce his evidence, or to cause the attendance of his witnesses, or to perform any other act necessary to the further progress of the suit, for which time has been allowed.”

42. It is pertinent to note that the Honble Supreme Court in 1966 (3) SCR 300 (supra) has not dealt with the Order 17 Rule 3 of CPC and dealt with only section 11 and pointed out the conditions for constituting the principles of res judicata. The said case is not applicable to the facts of the instant case.

43. The decision cited supra AIR 1936 Lahore 385 followed the decision of the Madras High Court in Govindoss Krishnadoss Vs. Rajah of Karvetnagar and another (1929 Madras 404), wherein it was held hereunder:

9. They were petitions which a Court usually disposes of on affidavits, and in such cases affidavits form the evidence on which the matter is decided. Now in M. P. 61 respondent 1 failed to adduce in time any evidence to prove the allegation of fact which he had to prove and his petition was, therefore, dismissed. That is a dismissal on the merits : see Kartick Chandra Pal v. Sridhar Mandal [1886] 12 Cal. 563. The lower Court was clearly in error in holding that the dismissal was not on the merits. It was not, therefore, opens to respondent 1 to put in any further petition on the same allegation of fact, nor was it open to the Court to entertain it. The dismissal of the petition for want of evidence was a judicial order, and a Court is merely abusing legal procedure if, immediately after it dismisses a petition for want of evidence, it admits another on exactly the same allegations and proceeds to try it. It is saying in effect:

The dismissal of your case yesterday was because you did not adduce your evidence in time, but nevertheless I will allow you to adduce it to-morrow. My order dismissing your first petition was really not an order dismissing it and I will now hear it over again.

10. Nor can a party play with the Court saying:

I will not offer evidence and will suffer judgment to-day, but you cannot refuse to allow me to re-open the matter and to offer evidence to-morrow.

11. An order dismissing such a petition for want of evidence is a final order, binding not only on the parties but also on the Court itself.”

44. In ORIENTAL ELECTRICALS INSULATION Vs. FARIDABAD COMPLEX (1996 Punjab and Haryana High Court reported in (1996) 114 PLR 215) has taken the similar view and held as hereunder:

“5. Admittedly, the appellant had instituted a 'suit on 18th October, 1985. It had claimed that the respondent was not -entitled to recover the arrears of Teh Bazari from 1st July, 1972 to 30th June, 1983 which amounted to Rs. 74,259.60. It was asserted that the lawn was not used for the purpose of storage of coal and that the impugned demand was barred by limitation. The issues were framed and parties were given several opportunities to lead evidence. The appellant had produced certain witnesses. However, it failed to produce' the other witnesses cited by it. The trial Court held that the appellant having failed to conclude its evidence in spite of various opportunities and to pay the costs, it was not entitled to prosecute the case. It closed the evidence under Order 17 Rule 3 Civil Procedure Code. After consideration of the evidence led by the appellant, it dismissed the suit. No appeal was filed. Therefore, the judgment and decree became final.

7. The principle of res judicata embodies norms of public policy and a rule of private justice. It is based on the need of giving finality to judicial decisions and the right of the individual to be saved from vexatious multiplicity of proceedings. It also ensures that there are not inconsistent decisions regarding the same issue.

9. …. Furthermore, learned counsel for the respondents has referred to the decision of Nila v. Punun A.I.R. 1936 Lah.385. In this case, it has been clearly held that "a decision under Order 17 Rule 3 of the Civil Procedure Code is to be deemed to be a decision on merits and such a decision falls within the scope of Section 11 Civil Procedure Code". This decision clearly supports the contention raised on behalf of the respondents. Accordingly, the view taken by the learned appellate Court deserves to be upheld.”

45. The principles laid down by the High Court of Lahore, Madras High Court and Punjab and Haryana High Court cited supra make it crystal clear that the order of dismissal of suit for default passed under Order 17 Rule 3 of C.P.C. read with Order 9 Rule 9 would be deemed to have been passed on merits. It has to be reiterated in the decision cited supra as well as in the instant case in the civil suit filed by the first respondent issues were framed and the first respondent was afforded adequate opportunity to lead evidence and in spite of the same the first respondent has not produced any evidence and as a result the suit was dismissed for default under Order 17 Rule 3 of Code of Civil Procedure and the same was not challenged by preferring any appeal or any restoration petition filed and as such the said order has become final. It is also to be reiterated that the issue involved in the civil suit is the same as the issue involved in the instant case and as such the first respondent is estopped from reagitating the issue contending the impugned trade mark is not deceptively similar as that of the applicants trade mark.

46. In view of the aforesaid reasons, we are constrained to allow the application and consequently direct the second respondent herein to remove the impugned trade mark “DROTIKIND” in respect of registration No.1309918 in Class 5 by expunging the entry from the register. Consequently, connected Miscellaneous Petition No.125 of 2013 is closed. There will be no order as to costs.