Amit R. Trivedi Vs. Assistant Registrar of Trade Marks and Another - Court Judgment

SooperKanoon Citationsooperkanoon.com/1118012
CourtIntellectual Property Appellate Board IPAB
Decided OnMar-19-2008
Case NumberOA/29/2007/TM/AMD
JudgeHON'BLE SHRI Z.S. NEGI, VICE-CHAIRMAN & HON’BLE SHRI SYED OBAIDUR RAHAMAN, TECHNICAL MEMBER
AppellantAmit R. Trivedi
RespondentAssistant Registrar of Trade Marks and Another
Excerpt:
(circuit bench at ahmedabad) hon'ble shri z.s.negi, vice- chairman: this is an appeal under section 91 of the trade marks act, 1999 (hereinafter referred to as the act) directed against the order dated 28.3.2006 passed by the assistant registrar of trade marks, ahmedabad whereby he refused the applications for registration of trade mark seren and the grounds for such refusal recorded by him on 4.9.2006. 2. the facts of the case as stated in the appeal is that the appellant is a proprietorship firm engaged in the business of manufacturing and selling inter alia pharmaceutical and medicinal preparation. it invented the word seren, by telescoping the drug, namely, serratiopeptidase which is the raw material in proteolytic enzyme range, this invented word adopted as the trade mark is entitled to highest level of protection. the appellant is the original adopter and sole proprietor of this well-known trade mark seren that has been used since the year 2003 by it. in order to avail the benefit of statutory protection under the provisions of the act, the appellant filed application no. 1342101 on 2.3.2005 in class 5 for registration of the said trade mark seren. the appellant received examination report no. exam 19 dated 1.4.2005 raising objection under section 11(1) of the act by the registrar and the said objection was replied by letter no. kcp/261/04-05 dated 10.4.2005. the appellant after obtaining permission from the drug controller have started manufacturing and marketing medicinal preparation under the mark seren. the assistant registrar finally heard the counsel for the appellant on 18.8.2005, wherein the written argument of the appellant was also filed. the appellants attorney received a letter dated 28.3.2006 from the trade marks registry informing that the application no.1342101is refused registration under section 11(1) of the act. 3. on filing forms tm-15 dated 26.4.2006, the appellant attorney received the grounds for refusal recorded on 4.9.2006 by the assistant registrar of trade marks. aggrieved by and dissatisfied with the impugned order, the appellant has filed this appeal for, amongst others, setting aside the impugned order of the assistant registrar of trade marks, ahmedabad and proceedings in the application may be proceed to the next stage. 4. the appeal came up for hearing before us on 21.2.2008 at circuit bench at ahmedabad wherein shri k. c. patel, advocate appeared on behalf of the appellant and none represented the respondents. the learned counsel submitted the written submission. 5. shri k. c. patel, learned counsel for the appellant, submitted that the product under the trade mark trade name seren is schedule “h” drug and the said medicinal preparation is prescribed by physician only after careful examination of the patient and after conducting series of medical test. the same is also to be sold by the qualified dispensing chemist/druggist on production of physicians prescription and, therefore, there is no chance of cause of confusion or deception and as such is not hit by the provision of section 11 of the act. learned counsel has by furnishing search report in relation to the conflicting mark specified in the examination report pointed out that the application no. 788073 has been withdrawn, application nos. 923136 and 125573 have been abandoned and application no.849647 is still a new application. the application no.970036 for registration of trade mark serene in class 5 has been registered but the appellant has not received any notice or objection from the registered proprietor thereof. in these circumstances, the assistant registrar ought to have issued cross notice to such proprietor to ascertain whether they are interested to oppose the registration of appellants trade mark seren. in support of his submission, the learned counsel relied up on the decision of high court of gujarat in cadila laboratories ltd. v. the registrar of trade marks, 2002 (24) ptc 308 (guj) wherein it was held as under:- “the case before the registrar was not only to accept the application but before the application is accepted, he should have advertised the application for inviting the public objections if any including objections from proprietors of the cited mark and other public representing the trade mark to represent their views so that he would have the benefit and advantage of other views of the public before considering as to whether the mark applied is deceptively similar or any other mark which is existing in the market. if the applicant satisfactorily meets all the objections raised by the office, the application will be advertised in the trade mark journal before acceptance as per section 20 on the applicant furnishing a printing block where necessary. the application may be advertised before acceptance if it relates to a trade mark to which section 9(1) and section 11(1) and (2) applies or in any other case where it appears that it is expedient by reason of any exceptional circumstances so to do. looking to the facts of the present case, exceptional circumstances did exist and therefore the registrar ought to have advertised the trade mark in the trade mark journal before acceptance.” 6. the facts of the appeal on hand and the facts of the above referred cadila laboratories ltd.s case closely resemble except that the conflicting marks were borofax and brofex, which prima facie did not appear to be phonetically and structurally identical or similar. in the present case the conflicting marks seren and serene are patently identical phonetically as well as structurally. in view of this, we do not think it necessary to burden ourselves to record the further submissions that were made by the learned counsel and further decisions relied upon by him in support of his submissions as we are of the opinion the appellants mark is so glaringly similar or identical that the likelihood of confusion or deception is imminent. in our view the likelihood of deception or confusion is so patent that remanding the matter back to the assistant registrar would be sheer waste of public time. in support of our view, we rely upon the decision of the bombay high court in the matter of m/s. r.t. engineering and electronics co., air 1972 bombay 157, which is referred to at page 313 in the cadila laboratories ltd.s case (supra) thus: “whilst, generally speaking, the court would follow the procedure of advertising the mark and deciding the question of confusion or deception only when it is opposed and evidence taken in regard to the same, before it applies the bar of section 11 (a) of the act, there is nothing in the said section to deprive the registrar of the power which he has under section 18 (4) of the act, in proper case, to refuse to accept an application for registration without advertising it or calling for evidence of likelihood of deception or confusion. it is not difficult to conceive of case in which the likelihood of confusion or deception may be so patent that to compel the registrar to advertise and call for evidence would be sheer waste of public time, and it is for that reason that the legislature has advisedly not made it obligatory on the registrar to do so in every case under section 11 (a).” the assistant registrar apart from finding the mark to be identical with the cited registered /pending marks has recorded in his impugned order that the mark applied for is seren whereas it is observed from the wrapper filed by the appellant that they are using the mark on their products as seren-d and seren-n with different ingredients of drugs which itself is confusing and this confusion among the practioners/public may lead to disastrous consequences as held by the gujrat high court in cadila case (flasigo vs. falsitab). 7. by applying the decision in the matter of m/s. r.t. engineering and electronics co., as referred to in cadila laboratories limited (supra), we do not see any reason to interfere with the impugned order of the assistant registrar and accordingly, we uphold the impugned order and dismiss the appeal. however, there shall be no order as to costs.
Judgment:

(Circuit Bench at Ahmedabad)

HON'BLE SHRI Z.S.NEGI, VICE- CHAIRMAN:

This is an appeal under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 28.3.2006 passed by the Assistant Registrar of Trade Marks, Ahmedabad whereby he refused the applications for registration of trade mark SEREN and the grounds for such refusal recorded by him on 4.9.2006.

2. The facts of the case as stated in the appeal is that the appellant is a proprietorship firm engaged in the business of manufacturing and selling inter alia pharmaceutical and medicinal preparation. It invented the word SEREN, by telescoping the drug, namely, SERratiopeptidase which is the raw material in proteolytic Enzyme range, this invented word adopted as the trade mark is entitled to highest level of protection. The appellant is the original adopter and sole proprietor of this well-known trade mark SEREN that has been used since the year 2003 by it. In order to avail the benefit of statutory protection under the provisions of the Act, the appellant filed application No. 1342101 on 2.3.2005 in class 5 for registration of the said trade mark SEREN. The appellant received Examination report No. Exam 19 dated 1.4.2005 raising objection under section 11(1) of the Act by the Registrar and the said objection was replied by letter No. kcp/261/04-05 dated 10.4.2005. The appellant after obtaining permission from the Drug Controller have started manufacturing and marketing medicinal preparation under the mark SEREN. The Assistant Registrar finally heard the counsel for the appellant on 18.8.2005, wherein the written argument of the appellant was also filed. The appellants attorney received a letter dated 28.3.2006 from the Trade Marks Registry informing that the application No.1342101is refused registration under section 11(1) of the Act.

3. On filing Forms TM-15 dated 26.4.2006, the appellant attorney received the grounds for refusal recorded on 4.9.2006 by the Assistant Registrar of Trade Marks. Aggrieved by and dissatisfied with the impugned order, the appellant has filed this appeal for, amongst others, setting aside the impugned order of the Assistant Registrar of Trade Marks, Ahmedabad and proceedings in the application may be proceed to the next stage.

4. The appeal came up for hearing before us on 21.2.2008 at Circuit Bench at Ahmedabad wherein Shri K. C. Patel, Advocate appeared on behalf of the appellant and none represented the respondents. The learned counsel submitted the written submission.

5. Shri K. C. Patel, learned counsel for the appellant, submitted that the product under the trade mark trade name SEREN is Schedule “H” drug and the said medicinal preparation is prescribed by physician only after careful examination of the patient and after conducting series of medical test. The same is also to be sold by the qualified dispensing chemist/druggist on production of physicians prescription and, therefore, there is no chance of cause of confusion or deception and as such is not hit by the provision of section 11 of the Act. Learned counsel has by furnishing search report in relation to the conflicting mark specified in the examination report pointed out that the application No. 788073 has been withdrawn, application Nos. 923136 and 125573 have been abandoned and application No.849647 is still a new application. The application No.970036 for registration of trade mark SERENE in class 5 has been registered but the appellant has not received any notice or objection from the registered proprietor thereof. In these circumstances, the Assistant Registrar ought to have issued cross notice to such proprietor to ascertain whether they are interested to oppose the registration of appellants trade mark SEREN. In support of his submission, the learned counsel relied up on the decision of High Court of Gujarat in Cadila Laboratories Ltd. v. The Registrar of Trade Marks, 2002 (24) PTC 308 (Guj) wherein it was held as under:-

“The case before the Registrar was not only to accept the application but before the application is accepted, he should have advertised the application for inviting the public objections if any including objections from proprietors of the cited mark and other public representing the Trade Mark to represent their views so that he would have the benefit and advantage of other views of the public before considering as to whether the mark applied is deceptively similar or any other mark which is existing in the market.

If the applicant satisfactorily meets all the objections raised by the Office, the application will be advertised in the trade mark journal before acceptance as per Section 20 on the applicant furnishing a printing block where necessary. The application may be advertised before acceptance if it relates to a trade mark to which Section 9(1) and Section 11(1) and (2) applies or in any other case where it appears that it is expedient by reason of any exceptional circumstances so to do. Looking to the facts of the present case, exceptional circumstances did exist and therefore the Registrar ought to have advertised the trade mark in the Trade Mark Journal before acceptance.”

6. The facts of the appeal on hand and the facts of the above referred Cadila Laboratories Ltd.s case closely resemble except that the conflicting marks were BOROFAX and BROFEX, which prima facie did not appear to be phonetically and structurally identical or similar. In the present case the conflicting marks SEREN and SERENE are patently identical phonetically as well as structurally. In view of this, we do not think it necessary to burden ourselves to record the further submissions that were made by the learned counsel and further decisions relied upon by him in support of his submissions as we are of the opinion the appellants mark is so glaringly similar or identical that the likelihood of confusion or deception is imminent. In our view the likelihood of deception or confusion is so patent that remanding the matter back to the Assistant Registrar would be sheer waste of public time. In support of our view, we rely upon the decision of the Bombay High Court in the matter of M/s. R.T. Engineering and Electronics Co., AIR 1972 Bombay 157, which is referred to at page 313 in the Cadila Laboratories Ltd.s case (supra) thus:

“Whilst, generally speaking, the court would follow the procedure of advertising the mark and deciding the question of confusion or deception only when it is opposed and evidence taken in regard to the same, before it applies the bar of Section 11 (a) of the Act, there is nothing in the said section to deprive the Registrar of the power which he has under Section 18 (4) of the Act, in proper case, to refuse to accept an application for registration without advertising it or calling for evidence of likelihood of deception or confusion. It is not difficult to conceive of case in which the likelihood of confusion or deception may be so patent that to compel the Registrar to advertise and call for evidence would be sheer waste of public time, and it is for that reason that the Legislature has advisedly not made it obligatory on the Registrar to do so in every case under Section 11 (a).”

The Assistant Registrar apart from finding the mark to be identical with the cited registered /pending marks has recorded in his impugned order that the mark applied for is SEREN whereas it is observed from the wrapper filed by the appellant that they are using the mark on their products as SEREN-D and SEREN-N with different ingredients of drugs which itself is confusing and this confusion among the practioners/public may lead to disastrous consequences as held by the Gujrat High Court in Cadila case (Flasigo vs. Falsitab).

7. By applying the decision in the matter of M/s. R.T. Engineering and Electronics co., as referred to in Cadila Laboratories Limited (supra), we do not see any reason to interfere with the impugned order of the Assistant Registrar and accordingly, we uphold the impugned order and dismiss the appeal. However, there shall be no order as to costs.