Trademark Tribunal
Stadmed Private Limited vs Abbott Laboratories on 17 November, 2005
Equivalent citations: 2006(32)PTC229(REG)
JUDGMENT
M.C. Gupta, DRTM
1. Word 'ZYTRIN' was sought for registration under Application No. 1069985 in class 5 dated 28th December, 2001 in respect of pharmaceutical and medicinal preparations by the above named Applicants. The mark was proposed to be used on the date of application. Eventually the application was advertised before acceptance under the proviso to Section 20(1) vide Trade Marks Journal No. 1306 (S-II) dated 4th November, 2003 at page 174.
2. On 16th March, 2004 a notice of opposition on Form TM-5 was lodged by the above named Opponents objecting to the registration of the aforesaid impugned mark on the following grounds:-
3. That the Opponents are a large company and a leading organization in the world in the field of healthcare and are the proprietors of several well-known trade marks including 'HYTRIN' which is being used since the year 1983 and is also registered under No. 420307 in class 5 in India.
4. That the Opponents are the registered proprietors of the same trade mark 'HYTRIN' in various countries of the world as per details contained in para 16 of the notice of opposition and that the same is also known as well-known trade mark on account of its use and reputation throughout the world and that under these circumstances the registration of the impugned mark which is deceptively similar to the registered trade mark of the Opponents, is likely to cause confusion or deception during the course of trade and hence prohibited for registration under Section 11 read with Section 12 of the Act.
5. That the very adoption of the impugned mark by the Applicants is with a view to trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents in their registered trade mark and, therefore, they cannot claim its proprietary rights under Section 18(1) of the Act. The Opponents took objections to the registration of the impugned mark under Sections 9, 11, 12 and 18 of the Act and also prayed for exercise of the discretion of this Tribunal, adverse to the Applicants, under Section 18(4) of the Act.
6. In their counter-statement filed on 10.8.2004 the Applicants denied the various averments of the Opponents and stated that the impugned mark is being used after April, 2002 and that there are many marks on the Register consisting of similar suffix 'TRIN' which is common to the trade and that the prefixes in the rival marks are not same and similar.
7. After completion of the evidence, the matter was set down for hearing which took place on 17.10.2005 in presence of Shri P.S. Mahapatra, Advocate for the Opponents and Shri H.P. Shukla, Advocate for the Applicants.
8. Shri P.S. Mahapatra learned advocate for the opponents stated that the rival marks and the rival goods are same and similar and, therefore, the registration of the impugned mark is mandatory prohibited for registration under Section 11 read with Section 12 of the Act. He stated that the Opponents are the registered proprietors of the word 'HYTRIN' in various countries of the world. He invited my attention to various exhibits and annexures filed in support thereof. He stated that the Opponents are using their trade mark 'HYTRIN' world wide including India since the year 1984 and the same also qualifies as a 'wellknown' trade mark. He invited my attention to para 12 of the affidavit of Mary L. Winburn filed under Rule 50 wherein sales turn over and promotional expenses are given by the Opponents. Shri Mahapatra also invited my attention to various cited cases reported as (1996) PTC 16, (1990) PTC 189, (2004) 28 PTC 584, (2001) PTC page 541, (1990) PTC 73, (2002) 25 PTC 784 - in support of his contentions.
9. Shri H.P. Shukla learned advocate for the Applicants vehemently refuted the submissions of Shri Mahapatra and stated that the rival marks cannot be held to be deceptively similar as the prefixes in the rival marks are completely different and in any case the Applicants have started using the impugned mark from the year 2002 and invited my attention to the affidavit of Aloke Kumar Bose filed under Rule 51. Shri Shukla stated that each case has its own peculiar facts and circumstances and the cases cited by Shri Mahapatra relates to injunction matters and not to registration of the trade mark.
10. I have gone through the submissions and the records and all the cited cases. It is correct that each case has its own peculiar facts and circumstances, but however it is important to follow the principles that are laid down while comparing the rival word marks. The comparison of the two marks has to be done as a whole. The famous dictum of Lord Parker reported in (1906) 23 RPC 774 at page 777, which is approved by the Hon'ble Supreme Court also, and is still relevant, is as under:-
You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case.
11. Further both the rival marks are phonetically, visually and structurally appear to be quite deceptively similar and this Tribunal has to be more careful in case of medicinal preparations to prevent any hazardous consequences in case one medicine is mistaken from the other. It has been held by the Hon'ble Supreme Court of India in a case reported as that "The Courts have to apply higher and stricter standard in deciding the question of deceptive similarity between the rival marks in case of medicines. Even if there is possibility of confusion, it may result in disasters consequences." This Tribunal is conscious of the fact that the impugned mark was proposed to be used on the date of application and, therefore, no harm or prejudice is going to cause to the Applicants if the same is refused registration. Even otherwise since the rival marks are held to be deceptively similar - under Section 2(1)(h) of the Act, and since the Opponents are prior registered proprietors of a deceptively similar mark, the objection to the registrability of the impugned mark under Section 11 is a foregone conclusion and the issue is decided accordingly. Since there was no evidence of use on the date of application, the Applicants cannot claim any benefit of Section 12 of the Act.
12. Keeping in view the overall facts and circumstances of the case and more particularly since the rival goods are medicinal preparations, the discretion of this Tribunal shall also go adverse to the Applicants and the same is accordingly ordered by way of refusing the impugned application.
13. In view of the foregoing, the Opposition No. KOL-166747 is allowed and the Application No. 1069985B in class 5 is refused registration. There shall be no order towards the costs of the proceedings.