Intellectual Property Appellate Board
The Wellcome Foundation Limited vs Reliance Formulations Private Ltd. And ... on 20 January, 2005
Equivalent citations: 2005(30)PTC533(IPAB)
ORDER
S. Jagadeesan, J. (Chairman)
1. M/s. Reliance Formulations Private Ltd., the first respondent herein, on 18.7.1990 filed an application No. 533517 in class 5 of the Fourth Schedule of the Rules framed under the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, for registration of the trademark word per se 'ZOLIPAX', in respect of pharmaceutical and medicinal preparations. The said application was accepted and advertised in the Trade Marks Journal No. 1080 dated 1.6.1994 at page 305. On 25.8.1994, the appellants herein M/s. The Wellcome Foundation Limited, London filed their opposition stating that they are having registration in India for (1) Trade Mark 'ZOVIRAX' registered under No. 327933 dated 17.8.1977 in class 5 in respect of pharmaceutical and medicinal preparations and substances, veterinary preparations and substances; (2) Trade Mark 'ZOVIRA-X' registered under No. 335612 dated 14.4.1978 in class 5; and (3) Trade Mark 'ZOVIREX' registered under No. 335613 dated 14.4.1978 also in class 5 in respect of the same products. The appellants herein are carrying on an establishment business as manufacturers and merchants of wide variety of pharmaceutical and medicinal preparations on a world-wide basis. By virtue of the registration and long standing use of the mark internationally, including in India, the appellant company enjoys exclusive proprietary rights. Since the impugned mark of the first respondent is identical and deceptively similar to that of the appellant's mark, the registration of the same is violative of Section 9, 11(a), 11(e), 12(1) and 18(1) of the said Act. The first respondent filed their counter statement on 29.11.1994 denying all the material averments contained in the notice of opposition and further stated that they adopted the trademark 'ZOLIPAX' in early 1990 and started the use of the mark since 16.7.1990. Thereafter, they applied for registration of the impugned mark on 18.7.1990. Subsequently, the appellant herein filed evidence in support of their opposition and the first respondent also filed their evidence in rebuttal. The Assistant Registrar of Trade Marks heard the matter on 16.12.1996 and under the impugned order, the Assistant Registrar of Trade Marks dismissed the opposition No. AMD 761 of the appellant herein and accepted the application of the first respondent for registration, finding that the impugned mark 'ZOLIPAX' is a coined word and the objection under Section 9 cannot be sustained as the appellant did not take any such objection in their opposition. Further, the Assistant Registrar of Trade Marks held that the impugned mark is totally distinguishable from the registered marks of the appellants and there is no similarity except the prefix 'ZO' and the suffix 'AX'. Apart from that, the Assistant Registrar of Trade Marks further held that there are conflicting versions with regard to the year of use of the mark by the appellant and as such, the use of the appellant's mark can be determined only on the basis of the evidences adduced by the appellant. The appellant produced the invoices only from the year 1995 and hence though the appellant had registered the mark much earlier, those marks were not put to use till 1995 and the use of the appellant of their mark is subsequent to the use of the impugned mark by the first respondent. Consequently, the Assistant Registrar of Trade Marks held that there will be no confusion or deception in the trade. Aggrieved by the same, the appellant preferred the appeal in Appeal No. 2 of 1997 on the file of the High Court of Gujarat at Ahmedabad, which was transferred to this Board in compliance of Section 100 of the Trade Marks Act, 1999. During our sitting at Ahmedabad, we heard the appeal on 21.12.2004. Shri T.N. Daruwalla, the learned counsel appeared on behalf of the appellant and Shri R.R. Shah, the learned counsel appeared for the first respondent.
2. The learned counsel for the appellant vehemently and very elaborately contented that the Assistant Registrar of Trade Marks, in deciding the similarity of the two trademarks had committed an error in pointing out the minute differences of different alphabets used in the name while comparing the conflicting marks. He also contented that the Assistant Registrar of Trade Marks has totally failed to consider the well laid principles of the Hon'ble Supreme Court as well as the other High Courts, in the comparison of the marks. The Assistant Registrar totally mis-directed himself in not considering the phonetic, visual as well as the writing similarity of both the marks. The product of both appellant as well as the first respondent being pharmaceutical drugs for human consumption, the confusion that would cause is hazardous. The Assistant Registrar of Trade Marks is not correct in finding that there is no similarity between the two marks in view of use of the letters 'L' and 'P' as 3rd and 5th letters in the name of the first respondent's mark instead of 'V' and 'R' in the name of the appellant's mark. The learned counsel further contented that the burden of proof is on the first respondent/applicant to establish that the registration of their mark will not create any confusion or deception in the trade. When the applicant's marks were registered as early as 1977 and 1978 and the adoption of the impugned mark by the first respondent is of the year 1990, definitely the appellant's mark had attained a reputation and has become a well known mark especially when there is no dispute with regard to the international reputation of the same. The adoption of the first respondent's mark is from 16.7.1990 and the application for registration is on 18.7.1990. Hence within two days, the first respondent's mark could not have attained any distinctiveness in respect of their goods. He also referred to certain passages from the Books ? The Law of Trade Marks and Passing-off by Dr. S. Venkateswaran; ? The Trade and Merchandise Marks Act 1958 by Shri Shavaksha; ? TRADE MARKS and Passing-off - 4th Edition by P. Narayanan; and ? Kerly's Law of Trade Marks & Trade Name, 12th Edition regarding Onus of Proof, the disastrous consequences arising from comparison and the Rules of Comparison. He also relied upon the following judgements, wherein certain names have been held to be similar and deceptive:-
Torrent Pharmaceuticals Ltd. v. The Wellcome Foundation 2002(24) PTC 580 (2) AHPC v. K.V. Chennamallu 2004 (28) PTC 154 (IPAB) Ciba Ltd. v. M. Ramalingam 1957 Bom. L.R.(59) 548 (4) Corn Products v. Shangrila Food Products 1960 (1) SCR 968 (5) Astra-IDL Ltd. v. TTK Pharma Ltd. AIR 1992 Bom. 35 Cadila Health Care Ltd. v. Cadila Pharmaceuticals (2001) 5 SCC 73 Milment Oftho Ind. v. Allergan Inc. AIR 2004 SC 3355 Himalaya Drug Co. v. Warner Lambert Pharma Co. 1969 Bom. L.R. (72) 528 Nucron Pharma v. International Pharma 1994 IPLR 56 American Home Products & Wyeth Labs v. Lupin Labs Ltd. 1996 IPLR 61.
3. On the contrary, Shri R.R. Shah, the learned counsel for the first respondent contented that the registration of the trademark will not confer any absolute right on the registered proprietor. The registration should be accompanied by the use of the mark in order to have the protection and distinctiveness. Though the appellant registered their marks in the year 1977 & 1978, till 1995 neither the appellants nor on their behalf the mark was used. Though the appellant had registered the mark much earlier, the first respondent is the first user of their mark and as such, it is not open to the appellant to claim any right. The initial burden is on the registered proprietor to establish that their mark has attained reputation and thereby it has become a well known mark in the trade as well as distinctiveness of their goods. Only on the discharge of this initial burden, the burden of proof shifts on the first respondent/applicant to establish that there is no confusion or deception and the mark is registerable one. When the appellant's mark is not in use, there is no question of confusion or deception arising because only the product of the first respondent is in the market. The learned counsel further contented that the trademark of the first respondent is not similar to that of the appellant either phonetically or visually. The pronouncement of both the names is clearly distinguishable and there cannot be any confusion or deception. Even if it is held that the marks are identical and similar, still by the non-use of the appellant's mark on the date of the application, the first respondent is entitled for the registration of the same and consequently there is no infirmity in the impugned order.
4. We carefully considered the above contentions of both the counsels. Before entering into other questions in the opposition proceedings, we have to consider, on whom the burden of proof lies. Though it is on the applicant to establish that he is entitled for registration of the trademark applied for, where the objection to the application is based on the alleged use and reputation of the opponent's trademark, the onus of establishing those facts lies upon the opponent as held in the case of Arthur Fairest Ld,'s application reported in 1951 RPC 197 at page 207 in the following terms "Before the objection under Section 11 can be sustained it is necessary for an opponent to establish a reputation in trade in connection with a trading style, device or mark of some character, 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."
It is so held in yet another case in The Appointed Person reported in 2000 RPC 285 at 287 in the following terms "Burden of proof in an opposition such as this lies on the opponent. It is for the opponent to show that the relevant likelihood of confusion exists".
Hence it is clear that the initial onus is on the opponent to establish their reputation enjoyed by the use of the same and as and when the initial onus is discharged, the burden is on the applicant to show that the registration of his mark is not likely to deceive or cause confusion. The onus can be discharged by filing evidence on relevant facts.
5. Section 11 of the Trade and Merchandise Marks Act, 1958 prohibits the registration of certain marks. Sub clause (a) refers to a mark, the use of which could be likely to deceive or cause confusion. Sub clause (b) refers to a mark, the use of which could be contrary to any law for the time being in force. As the Act is intended to give protection to the proprietors of the trademark as property and at the same time, it is also in the interest of the public at large as there should not be any confusion or deception in their minds, the absolute prohibition in respect of certain marks had been imposed under Section 11(a) and (b). That is why when the applicant seeks for registration of his mark, and the same is being opposed on the ground mentioned under the statute, it is initially for the opponent to establish his grounds of opposition. If the opponent has not discharged his initial burden then it is the discretion of the Registrar as to whether the applicant's mark can be registered or not.
6. In the case of hand, the objection of the appellant, as stated in the opposition, is that they have registered the mark 'ZOVIRAX', 'ZOVIRA-X' and 'ZOVIREX' as early as August 1977 and April 1978 and they are using the same regularly and by such use, their marks have attained a reputation and also has become a well-known mark in the trade. Moreover, it is distinctive in respect of their goods. When their mark become a well-known mark and also attained a good reputation in the market, the registration of the impugned mark would cause confusion and deception and as such, the impugned mark cannot be registered. So far as this aspect is concerned, the evidence let in by the appellant with regard to the use is available only from 1995 as could be seen in the invoices produced by the appellant. In the notice of opposition, the appellant has mentioned about the registration of the above three marks and also claimed a long standing use of the mark 'ZOVIRAX' internationally including India. It is also stated that the first respondent had adopted a deceptively similar mark on knowing the reputation and good-will of the appellant's mark. Except this, the appellant has not given any details with regard to the use of the mark in India. However, the further evidence in support of the opposition filed by way of an affidavit by Mr. Deepak Champaklal Tanna of M/s. Burroughs Wellcome (India) Limited reveals that his company has spent about Rs. 58 Lakhs towards promotional and advertisement expenses. Mr. Alan Sinclair Cox, the Trade Mark Manager of the appellant herein filed an affidavit in support of the opposition dated 6.6.1995 wherein he has stated that the appellant company first used the trademark 'ZOVIRAX' in India in the year 1981. He has also stated that the registration relied upon in the notice of opposition are all inter-associated and as such, use of any registered associated trademark can be accepted as an equivalent for the use of a registered trademark. He has also furnished the year-wise statement on international sales of his company's goods bearing the 'ZOVIRAX' trademark from 1986 to 1992 and the amount has been mentioned in Pounds. With regard to the use of the appellant's mark in India, only the affidavit of Mr. Deepak Champaklal Tanna and affidavit of Mr. Alan Sinclair Cox and five invoices are available. The invoices relate to the year 1995. There are contradictory statements in the two affidavits with regard to the use of the registered trademark. In the affidavit of Mr. Cox, it is stated that they used the registered mark first in the year 1981 in India. Mr. Tanna has stated in his affidavit that their company has used the said mark since 1990 only. The documentary evidence produced by the appellant reveals that the mark has been used only from the year 1995. When there are contradictory statements in the affidavits, we have to go by the documentary evidence produced by the appellant, which establish that the registered mark of the appellant had been put to use only in the year 1995. In the absence of any material before us to establish the use of the said mark prior to 1995, we have to hold that the mark was used only in the year 1995. The mere statement of accounts and sales statistics mentioned in the affidavit of Mr. Tanna, in the absence of any corroborative documentary evidence, cannot be accepted. Hence it is clear that though the appellant has registered their mark in the year 1977 and 1978 in India, the same were not put to use till 1995.
7. The claim of the first respondent is that they used the impugned mark 'ZOLIPAX' since 1990, about which there is no dispute. The documents produced by the first respondent also establish without any doubt that they have been using the impugned mark since 1990. Of course the first respondent started the use of the impugned mark on 16.7.1990 and applied for the registration on 18.7.1990. On the date of the application for registration, the first respondent's mark might not have attained any distinctiveness as contemplated under Section 9 of the Act but when the principal question is with regard to the issue under Section 11(a), the question for consideration is whether on the date of the application of the first respondent for registration of the impugned mark, the registration of the same would cause any confusion or deception in the trade. We have to say 'No' because on the date of application of the first respondent, the registered mark of the appellant was not in use and the goods of the appellant were not in the market in India and as such, there is no similar or identical mark or the goods is in the trade. Only if there is conflicting mark is available in the market, genuinely the possibility of confusion or deception would arise. In the absence of any conflicting mark in the trade, there cannot be any possibility of confusion or deception. Hence the objection under Section 11(a) necessarily fails.
8. Only in case where the restriction imposed under Section 11(a) is attracted, the other question relating to Section 9 or 18(1) would arise for consideration. So far as the contention of the learned counsel for first respondent that the prohibition under Section 12(1) is concerned, of course the said provision envisages that no trademark shall be registered in respect of any goods or description of goods, which is identical with or deceptively similar to a trademark, which is already registered in the name of a different proprietor in respect of the same goods or description of goods. As already stated, this prohibition is only to avoid any confusion or deception in the trade because of the existence of two conflicting marks in the same trade. We have already held that on the date of the application of the first respondent, the applicant did not either manufacture or market their goods under their registered trademark. Hence except the registration of the marks, the appellants have never put the mark in use and thereby failed to establish any reputation or distinctiveness in respect of their registered mark. Hence in our view, the prohibition under Section 12(1) cannot be invoked. We also find fit to refer the view of the Supreme Court in the case of Milment Oftho Industries and Ors v. Allergan Inc. 2004 (28) PTC 585 (SC) at page 585 in para 9 in the following terms:-
"However, one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market."
9. In fact, the learned counsel for the appellant did not lay his finger on any part of the material evidence available on record to establish that the appellant's registered mark in India have become a well known mark and thereby attained a reputation by the use of the same. Being aware of the non-availability of any material evidence with regard to the use of the registered trademark of the appellant in India, the learned counsel for the appellant fall back on the trans-border reputation by taking us through a list of countries where the appellant's mark were registered and also through some of the pamphlets and advertisements. Even assuming that the appellant had attained their reputation in foreign countries where their mark was registered, there cannot be any presumption that their registered mark in India has attained reputation and thereby it became a well known mark. As already pointed out, there is absolutely no evidence on the part of the appellant to establish that on the date of the application of the first respondent, the registered marks of the appellant in India have attained any reputation. The mark must be used in the place of registration as held by the Calcutta High Court in the case of A.J. Valcun v. V.S.V. Palanichamy AIR 1969 Cal 43 at page 48 para 20 in the following terms:-
"Use abroad and advertisement abroad outside the place where the mark is registered are not of any assistance to the appellant, even if it was established in fact that there was such a foreign use..................."
While considering the transborder reputation, it is for the appellant to establish by letting in evidence about the trans-border reputation. If the appellant wants to rely upon the transborder reputation, it is for them to furnish the materials such as availability of pamphlets and advertisements in India and also the foreign journals in which the advertisements of the appellant's goods or the marks were made, are available for circulation in India and thereby those in the field of dealing with such goods have knowledge about the appellant's mark. In the case on hand, the appellant did not let in any evidence to establish that the foreign journals in which the advertisements in respect of their mark were made are available in India. Equally, the appellants failed to produce any material that the circulars or pamphlets or write-ups with regard to the appellant's goods are made available in India especially among those who are dealing in such goods. In the absence of any such material, we are unable to accept the contention of the learned counsel for the appellant that the appellant had established the transborder reputation of their mark in India. Hence this contention of the learned counsel for the appellant is also fails.
10. For the reasons stated above, we are of the view that the appeal is devoid of any merits and accordingly the same is dismissed.