Delhi High Court - Orders
Allergan, Inc vs The Registrar Of Trade Marks on 17 February, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 9/2021 & I.A. 14875/2021
ALLERGAN, INC. ..... Appellant
Through: Mr. Ranjan Narula, Advocate.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Kirtiman Singh, CGSC with
Mr. Waize Ali Noo and Ms. Sri Rupa
Nag, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 17.02.2022
[VIA HYBRID MODE]
1. The present appeal under Section 91 of the Trade Marks Act, 1999 r/w Rule 156 of the Trade Marks Rules, 2017 [hereinafter referred to as "Trade Mark Act" and "Trade Mark Rules" respectively] impugns the Order dated 26th March, 2021 passed by the Senior Examiner of Trade Marks, rejecting Appellant's Trade Mark Application No. 3497497 for the word mark - 'ZYMAXID'.
2. The Appellant viz. Allergen, Inc. [hereinafter "Allergan"] is primarily engaged in developing, manufacturing, and commercializing branded pharmaceuticals, generic and over-the-counter medicines. They filed an application for registration of the Trade Mark viz. "ZYMAXID" in Class 05 on 01st March, 2017 for "PHARMACEUTICAL PREPARATIONS FOR THE Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 1 of 6 Signing Date:25.02.2022 16:32:14 TREATMENT OF BACTERIAL CONJUNCTIVITIS". The application was filed on 'proposed to be used' basis and then after being examined, First Examination Report ["FER"] dated 17th March, 2017 was issued by the Registrar of Trade Marks wherein certain objection(s) were raised under Section 11 of the Trade Mark Act. Appellant submitted its reply thereto on 16th October, 2017, along with its user affidavit. Hearing took place on 22nd March, 2021 and the trade mark application was rejected under sub-clause
(a) and (b) of Section 11(1) and Section 18(4) of the Trade Mark Act vide impugned Order.
3. Relevant portion of the impugned Order dated 26th March, 2021 reads as under: -
"Instant mark is phonetically and visually similar to the conflicting marks which is mentioned in the search report and also they are well in prior use in respect of the identical goods which sought by the applicant. The applicant is the well subsequent user among the conflicting marks user period. In view of these grounds, the Tribunal has opined that the applicant has deliberately chosen the subject mark in an effort to ride upon the goodwill and reputation of the conflicting marks. Applicant has no bona fide adoption of the subject mark in respect of the applied goods. Further, the allowance of the subject mark is patently mala fide since the mark has been dishonestly adopted by the applicant hence the applicant cannot claim to be the proprietor of the subject mark under Section 18 (1) of the Act. Allowance of the subject mark is adversely affecting the interest of the public, it would lead to confusion as it is more than likely, due to imperfect recollection that the average buyer may confuse the applicant's mark as the conflicting owners products. In view of such similarities between the nature of the marks and their goods, the applicant's trade channel and counters, there exists a strong likelihood of confusions on the part of the consuming public, including an association, as they are likely to assume and confuse that the applicant's goods are connected or otherwise associated with the conflicting marks goods, when no such connection exists. Consequently, the members of the trade would no doubt, be under the mistaken belief that the applicant's goods originate from the conflicting marks or that they have some trade connection or affiliation thereby causing irreparable loss and damage not only to the conflicting marks trade and business but also suiting erosion of distinctiveness hard earned by the conflicting marks.
In addition to the facts of the subject application, I want to discuss the land mark case of Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 2 of 6 Signing Date:25.02.2022 16:32:14 Cadila Health Care Ltd. v. Cadila Pharmaceuticals, AIR, 2001, SC, 1952 wherein the Supreme Court has stated that in an action for passing off on the basis of unregistered trade mark generally the following factors have to be considered for deciding the question of deceptive similarity of marks:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label marks
(b) The degree of resemblances between the niarks, phonetically similar and hence similar in idea
(c) The nature of the goods in respect or which they are used as trade marks
(d) The similarity in the nature, character and performance of the goods or the rival traders
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and or using the goods
(f) The mode of purchasing the goods or placing the orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
Based upon the Supreme Court guidelines, the above mentioned seven factors are obviously applicable to this case. In order to avoid the opposition to the registration as well as passing off actions against the subject mark, the Tribunal is not ready to accept the subject mark for journal publication.
In this position, I would like to enlighten the object of the Trade Marks Act, 1999. The said object is to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. If the subject mark is allowed for registration, the object of the Trade Marks Act, 1999 would be jeopardized and the purity of the Register will be affected.
In addition to that the Tribunal has given sufficient opportunities to the applicant for furnishing the documentary evidences in support of the user claim as mentioned in the application but the applicant has not produced a single evidence of user to substantiate the said user claim. Hence the Tribunal is opined that the applicant has not been bonafidely adopted the subject mark and honestly used the said trade mark among the trade and public.
In view of the above said reasons, the registration of the subject mark is refused under sections 11 (I) (a) & (b) and 18(4) of the Trade Marks Act, 1999 under the grounds of Relative grounds for refusal of registration and lack of prosecution respectively.
After persual of all the documents on record and submissions made by the applicant / authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3497497 cannot be accepted and refused accordingly."
4. Mr. Ranjan Narula, counsel for the Appellant/ Allergan, assails the Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 3 of 6 Signing Date:25.02.2022 16:32:14 impugned Order on following grounds: -
4.1. Impugned Order is contrary to the record, as the reasoning supplied by the Senior Examiner of Trade Marks is factually incorrect and erroneous. The Respondent has relied upon the search report which the conflicting mark "ZYMOXID" [hereinafter "cited mark"] is cited. The said mark is applied on 'proposed to be used' basis and as per the knowledge of Allergan, the same is not in use.
4.2. No material(s) were placed on record by the Respondent to come to the conclusion that the cited mark was in prior use in respect of the identical goods for which the registration is sought by Allergan. 4.3. The observation that Allergan has deliberately chosen the subject-
mark in an effort to ride upon the goodwill and reputation of the cited mark, is also misconceived as there is no basis or material on record to come to this conclusion.
4.4. The Respondent has observed that Allergan was granted "sufficient opportunities" for the purpose of "furnishing the documentary evidences in support of the user claim as mentioned in the application but the applicant has not produced a single evidence of use to substantiate the said user claim". This remark is also ex-facie erroneous in light of the user affidavit dated 19th September, 2017, enclosing therewith user details of Allergan.
4.5. Further, Allergan is desirous of taking appropriate steps against the cited mark.
5. Per Contra, Mr. Kirtiman Singh, Central Government Standing Counsel for the Respondent/ Registrar of Trade Mark defends the impugned Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 4 of 6 Signing Date:25.02.2022 16:32:14 Order and submits that the cited mark "ZYMOXID", is clearly in conflict with the mark applied for by Allergan and therefore, under Section 11 of the Trade Marks Act, the mark applied for was rightly rejected.
6. The Court has considered the submissions advanced by the counsel for the parties.
7. The impugned Order does not take note of material facts and circumstances of the instant case. Respondent has observed that the applied mark is phonetically and visually similar to the conflicting mark mentioned in the search report. To that extent, the Court does not find any error in the impugned Order. However, the Respondent has also observed that the cited mark is well in prior use in respect of the identical goods for which registration is sought by the Applicant/ Allergan. This observation is unsubstantiated and thus, unsustainable. The cited mark was applied on 'proposed to used basis' and there is no material on record before the Respondent that can justify the conclusions drawn in the impugned Order. Mr. Narula emphasis that the cited mark is not in use and relies upon google search to supplement his argument. Furthermore, the Respondent has also not considered the Allergan/ Applicant's user affidavit enclosing therewith the documentary evidence filed in support of the user claim, as mentioned in the application, which was admittedly on record Therefore, for the foregoing reasons, the impugned Order is set-aside, and the matter is remanded back to the Respondent. The matter be considered afresh in light of the opinion expressed hereinabove. Further, as-and-when the subject-mark is published, a cross-notice be sent to the affected parties/ Applicant of the cited mark viz.
Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 5 of 6 Signing Date:25.02.2022 16:32:14"ZYMOXID".
8. The observations made above are on a prima facie basis the Respondent is directed to decide the application afresh, in accordance with law. All the rights and contentions of the parties are left open.
9. The present appeal is allowed in the above terms and the pending application is also disposed of.
SANJEEV NARULA, J FEBRUARY 17, 2022 nk Signature Not Verified Digitally Signed By:SAPNA SETHI C.A.(COMM.IPD-TM) 9/2021 Page 6 of 6 Signing Date:25.02.2022 16:32:14