Gujarat High Court
Cadila Healthcare Ltd. vs Modern Cosmetics on 26 February, 2018
Author: Rajesh H.Shukla
Bench: Rajesh H.Shukla
C/SCA/13232/2007 JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
SPECIAL CIVIL APPLICATION NO. 13232 of 2007
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE RAJESH H.SHUKLA : Sd/
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1 Whether Reporters of Local Papers may be NO
allowed to see the judgment ?
2 To be referred to the Reporter or not ? NO
3 Whether their Lordships wish to see the NO
fair copy of the judgment ?
4 Whether this case involves a substantial
question of law as to the interpretation NO
of the Constitution of India or any
order made thereunder ?
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CADILA HEALTHCARE LTD.....Petitioner(s)
Versus
MODERN COSMETICS & 1....Respondent(s)
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Appearance:
MR BIJAL CHHATRAPADI for J SAGAR ASSOCIATES, ADVOCATE
for the Petitioner(s) No. 1
MR HM PARIKH, ADVOCATE for the Respondent(s) No. 1
MR DEVANG VYAS, ADVOCATE for the Respondent(s) No. 2
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CORAM: HONOURABLE MR.JUSTICE RAJESH H.SHUKLA
Date : 26/02/2018
ORAL JUDGMENT
1. The present petition is filed by the petitioner under Articles 226 and 227 of the Constitution of India challenging the order passed by the Intellectual Property Appellate Board, Chennai (Circuit Bench at Ahmedabad) in M.P. Nos.2 and 23 of 2006 in O.A. No. 1 of 2006 on the grounds stated in the memo of petition.
2. The facts of the case briefly summarized are as Page 1 of 20 C/SCA/13232/2007 JUDGMENT follows : 2.1 The petitioner (appellant in O.A. No.1 of 2006 before the Board) is a Company incorporated under the provision of the Companies Act, 1956 having its registered office at the address mentioned in cause title of the petition. The petitioner is engaged in the business of manufacturing and marketing pharmaceutical and also related products such as bulk drugs used in producing medicines and tablets, formulations, ampoules etc. The petitioner preferred Original Appeal No.1 of 2006 before the Board against the respondent challenging the order passed by the Assistant Registrar of Trade Marks dated 03.10.2005 refusing to exercise the power of review under Section 126(c) of the Trade Marks Act, 1999 read with Rule 115 of the Trade Marks Rules, 2002. The respondent no.1 is the proprietary concerned carrying on business activity of manufacturing and/or marketing of various cosmetic products. It is the case of the petitioner that the petitioner filed an application for Page 2 of 20 C/SCA/13232/2007 JUDGMENT registration of mark "CADIL ORANGE PEEL OFF HOME FACIAL LABEL" bearing No.608140 dated 29.09.1993 under Class 3 of the Trade Marks Act. According to the petitioner, the respondent no.1 had also filed an application for registration of mark "RESHAM BEAUTY"
bearing No.738371 under Class 3 of the Trade Marks Act on 27.03.1997. As per the petitioner, the application for registration of the trade mark of the petitioner was advertised in Trade Mark Journal and the petitioner had also filled in Form TM 16 on 03.12.1997 before the respondent no.2 for changing the name as "Cadila Healthcare Limited" instead of "Cadila Laboratories Limited" and also the change of address. The respondent no.2 submitted examination report requiring that words "new orange peel of home facial, cupid and orange and other descriptive matter" be disclosed. Therefore the petitioner is said to have disclaimed and sent a letter of discloser of the advise of "new orange peel of home facial, cupid and orange and other descriptive matter" be Page 3 of 20 C/SCA/13232/2007 JUDGMENT disclosed. Therefore it is the case of the petitioner that the petitioner has coined and invented the trade mark, which is distinctive mark.
2.2 However the respondent no.1 filed Opposition Application to the application of the petitioner dated 29.03.1993 claiming that the mark of the petitioner "CADIL New Orange Peel Off Home Facial - Cupid and Orange" is deceptively similar to the mark "RESHAM BEAUTY". It was also stated that the respondent had no objection to the trade mark "CADIL" and the objection is only on descriptive matters. For which, it has been contended that "our objection is only on descriptive matters which you have already disclaimed and marked amended to read as Cadil". Therefore the certificate of registration of trade mark was granted in 2003 and renewed for a period of seven years from 29.09.2000. The petitioner had also filed Form TM 16 on 03.12.1997 providing address of its advocate and the address for the service of notice. Thus it is the case of Page 4 of 20 C/SCA/13232/2007 JUDGMENT the petitioner that the petitioner did not receive any notice of opposition as he has shifted the place of business. Therefore, the petitioner was shocked to receive an order dated 28.07.2004 passed by the respondent no.2 holding that the application for registration of the trade mark is deemed to have been abandoned under Section 21(2) of the Trade Marks Act. Therefore, the petitioner filed Review Application seeking review of the order dated 28.07.2004 and same came to be dismissed by the Board vide order dated 23.02.2007, which led to filing of the present petition.
3. Heard learned advocate, Shri Bijal Chhatrapati for the petitioner, learned advocate, Shri H.M. Parikh for the respondent no.1 and learned Assistant Solicitor General, Shri Devang Vyas for the respondent no.2.
4. Learned advocate, Shri Chhatrapati referred to the background of the facts with details that as per AnnexureC, the application for the trade mark was made for the mark "CADIL ORANGE PEEL OFF HOME FACIAL LABEL" with description as provided on Page Page 5 of 20 C/SCA/13232/2007 JUDGMENT No.43 and as the objection was filed by the respondent no.1, the examination report was also submitted suggesting disclaimer. Therefore, the disclaimer was given by the petitioner as suggested and, thereafter, the application of the petitioner came to be granted vide certificate produced at AnnexureG at Page No.102 (Certificate of Registration of Trade Mark for cosmetic products). He submitted that thereafter the renewal has been granted also as per the order at AnnexureH and, therefore, the petitioner is having trade mark or registered trade mark. Learned advocate, Shri Chhatrapati referred to Section 21 of the Trade Marks Act, 1999 and pointedly referred to Section 21(2) read with Rule 47(7) of the Trade Marks Rules, 2002. Learned advocate, Shri Chhatrapati submitted that as provided in Rule 47, for opposition of registered trade mark, the notice is required to be given or issued within six months. Learned advocate, Shri Chhatrapati referred to Page No.117 and submitted that notice was served on 25.09.2003 and, therefore, notice is not served as required within stipulated period. Learned advocate, Shri Page 6 of 20 C/SCA/13232/2007 JUDGMENT Chhatrapati submitted that in fact, the notice is not at all served as the address of the petitionerCompany was changed, for which, measures were taken by the petitioner as stated above by filing prescribed form. Therefore, learned advocate, Shri Chhatrapati referred to Page No.108 of the petition, which is an application for correction of the error and submitted that Paragraph Nos.4 and 5 referred to the application for new address for service was given. Learned advocate, Shri Chhatrapati, therefore, submitted that though notice as required has not been served under misconception, the Assistant Registrar interpreted the provision of Section 21 of the Trade Marks Act and passed an order dated 28.07.2004 that the application made by the petitioner is deemed to have been abandoned under Section 21(2) of the Trade Marks Act. He submitted that therefore the petitioner had preferred Appeal and the impugned order came to be passed in Appeal No.1/2006 and, therefore, the present petition. Learned advocate, Shri Chhatrapati referred to Section 21(2) of the Trade Marks Act, which is pressed into service, is Page 7 of 20 C/SCA/13232/2007 JUDGMENT misinterpreted. He submitted that Section 21(2) of the Trade Marks Act provides that the Registrar shall serve a copy of the notice on the application opposing registration and it is required to be sent and, thereafter, the counter statement is required to be filed and thereafter if the person seeking registration does not file any such application then, he shall be deemed to have been abandoned the application. Learned advocate, Shri Chhatrapati submitted that this provision would not be attracted at all inasmuch as the petitioner having made an application and after the specific opposition qua only descriptive matter, the report was made. Therefore as per the report and disclaimer suggested, the petitioner gave disclaimer and, thereafter, trade mark has been registered. Not only that but it has been renewed also and there is no question of abandonment of such application when the trade mark has already been registered. Learned advocate, Shri Chhatrapati, therefore, submitted that there is misconception, which has led to such order. He also referred to Section 21 of the Trade Marks Act and submitted that Section 31 provides Page 8 of 20 C/SCA/13232/2007 JUDGMENT "Registration to be prima facie evidence of validity". Learned advocate, Shri Chhatrapati, therefore, submitted that once the trade mark has been registered under the Act, it would be a prima facie evidence of validity thereafter and the order passed by the Assistant Registrar and confirmed in the Appeal regarding the abandonment of the application for registration of the trade, are erroneous. Learned advocate, Shri Chhatrapati submitted that once the trade mark is registered, if anyone has any objection, recourse could be had as provided under Section 47 of the Act for removal from the register and also pressing ground for nonuse. He also submitted that Chapter VII of the Act referred to "rectification and correction of the register". He submitted that Section 57 of the Act referred to "Power to cancel or vary registration and to rectify the register". He, therefore, submitted that if at all, anyone has a grievance, the procedure as prescribed in the Act could be followed for cancellation or removal of the trade mark from the register.
5. Learned advocate, Shri Chhatrapati, therefore, submitted that there can be no cause of action Page 9 of 20 C/SCA/13232/2007 JUDGMENT survive. He also submitted that there is no similarity between two marks i.e. mark of the petitioner "CADIL New Orange Peel Off Home Facial
- Cupid and Orange" and mark of respondent no.1 "RESHAM BEAUTY". He, therefore, submitted that descriptive material has been removed as per the discloser and, therefore, the submission about the abandonment are thoroughly misconceived. He submitted that there appears to be any other motive by pursuing such litigation when the cause does not remain. Learned advocate, Shri Chhatrapati submitted that there appears to be fundamental misconception about the abandonment and for procedure for removal. Learned advocate, Shri Chhatrapati submitted that when the order came to be passed in the year 2004, there was no application pending before the Registrar, which would allow the impugned order passed under Section 21(2) of the Trade Marks Act regarding the abandonment of the application. Learned advocate, Shri Chhatrapati submitted that therefore Review Application filed by the petitioner has also not been appreciated with reference to the background and the material. He submitted that whole order Page 10 of 20 C/SCA/13232/2007 JUDGMENT has proceeded with reference to the Order 47 on the ground for review without considering the facts.
6. Learned advocate, Shri Chhatrapati referred to AnnexureB, which is an impugned order passed by the Appellate Board. He submitted that its speaks of the review without reference to the facts and the law. Learned advocate, Shri Chhatrapati referred to the question of law, which have been raised in the petition to emphasis that the trade mark registered under the Act would be conclusive after a period of seven years and can at all be said to be abandoned. He further emphasized that whether such application even after the grant of certificate and registration of trade mark could be deemed to have been abandoned. Further can it be abandoned without even notice to a person like the petitioner, in whose favour, it has already been registered. Therefore referring to this issues, which have been clearly set out, learned advocate, Shri Chhatrapati submitted that once trade mark is said to have been registered as stated above, it is the prima facie evidence of its validity and burden would shift on other side Page 11 of 20 C/SCA/13232/2007 JUDGMENT by taking suitable measures for removal or cancellation as provided in the Act. Therefore, learned advocate, Shri Chhatrapati submitted that it is for the respondent, who is required to prove that registered trade mark is required to be removed on the ground that may be made out, however, the order passed regarding abandonment after the registration of the trade mark is thoroughly misconceived. Therefore, learned advocate, Shri Chhatrapati submitted that the present petition may be allowed particularly when there is no such issue and the mark of the respondent cannot be said to have any similarity. Learned advocate, Shri Chhatrapati submitted that in fact, the respondent no.1 has no locus as once the trade mark of the petitioner is registered, remedy for him would be to make an application for removal and when his mark is totally different, no cause of action would survive.
7. In support of the submissions, learned advocate, Shri Chhatrapati referred to and relied upon the judgment of the Hon'ble Apex Court in case of V.N. Bharat Vs. Delhi Development Authority & Anr., reported in (2008) 17 SCC 321.
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C/SCA/13232/2007 JUDGMENT
8. Learned advocate, Shri H.M. Parikh for the respondent no.1 referred to the background of the facts and also referred to the list of events. He submitted that the order for abandonment of the trade mark came to be passed in 2004 and, hence, Appeal is required to be made, which is not preferred and the petitioner had filed Review. He, therefore, submitted that the Review is also rejected and, therefore, the order has become final.
9. Learned advocate, Shri Parikh referred to the papers including Form TM 16 produced on record and submitted that in the application for change of the name, the address of the petitioner has been stated and the application, which was made by the respondent opposing the trade mark was sent at the address mentioned by the petitioner. He, therefore, strenuously submitted that it cannot be now said that there was change in the address or it was not served. He submitted that the order which is appealable and is not challenged, has attained its finality.
10. Learned advocate, Shri Parikh submitted that though it is sought to be contended that the marks Page 13 of 20 C/SCA/13232/2007 JUDGMENT are not deceptively similar, the respondent is not having any mark but it has to be considered as on the date of application. He, therefore, submitted that the mark is no longer used, is not relevant as the issue had arisen at the relevant time, which is to be considered. In support of his contention, learned advocate, Shri Parikh has referred to and relied upon the judgment of the Hon'ble Apex Court in case of Rajahmundry Electric Supply Corporation Ltd. Vs. A. Nageshwara Rao & Ors., reported in AIR 1956 SC 213 and emphasized the observation made in Paragraph No.5. Learned advocate, Shri Parikh has also referred and relied upon the judgment of the Hon'ble Apex Court in case of M/s. Allied Blenders and Distillers Pvt. Ltd., Mumbai Vs. Intellectual Property Appellate Board Chennai & Ors., reported in AIR 2009 SC 196 and emphasized the observations made in Paragraph No.27.
11. Learned Assistant Solicitor General, Shri Vyas also made submission supporting the order that the application for opposition was made and the change of address as claimed by the petitioner cannot be readily accepted. He submitted that therefore when Page 14 of 20 C/SCA/13232/2007 JUDGMENT the opposition application filed has not been suitably decided, the order can be said to be just and proper.
12. In view of these rival submissions, it is required to be considered whether the present petition deserves consideration.
13. As could be seen from the background of the facts and the rival submissions, the petitioner had made an application for registration of trade mark "CADIL ORANGE PEEL OFF HOME FACIAL LABEL" with the descriptive material. Thereafter on the basis of the examination report, the discloser was suggested and the petitioner had given consent for discloser, copy of said consent letter is also produced on record. Therefore in view of the discloser, the mark of the petitioner came to be registered as per the order dated 23.09.1993, which has also been renewed. Therefore, it is evident that the petitioner is the holder of the registered trade mark and, therefore as provided in Section 31 of the Trade Marks Act, 1999, once the registration is made, it would be a prima facie evidence of validity of the validly registered trade mark. Therefore once the trade Page 15 of 20 C/SCA/13232/2007 JUDGMENT mark is registered, if anyone has any grievance, necessary procedure as provided in the Trade Marks Act, 1999 for removal and/or rectification under Section 57 of the Act, could be made and also for removal of the mark as provided in Section 47 of the Act. The controversy which has been raised in the petition resulting to the impugned order is that in exercise of purported power under Section 21(2) of the Act, the Assistant Registrar, Trade Mark passed an order that the application filed by the petitioner for registration of the trade mark is deemed to have been abandoned. This order appears to have been passed under misconception that the application made by the petitioner was subject to opposition and when the notice was served, perhaps the address was changed. Therefore the Registrar under the impression that since there is no counter to this opposition, the application for registration of the trade mark is deemed to have been abandoned after the lapse of period. However this itself suggest a total communication gap or lack of coordination within the trade registry when on one hand, such application is kept pending and on the other hand, Page 16 of 20 C/SCA/13232/2007 JUDGMENT on the basis of discloser suggested, the trade mark of the petitioner has been registered and, thereafter, renewed for seven years. Therefore the exercise of power under Section 21(2) of the Act would have relevant at the time of considering the application for registration. As stated above, though the opposition application was made on the basis of the report, the discloser was suggested and the respondent is said to have said that it has no objection, if the deceptive material is removed or disclaimed. Therefore, the petitioner is said to have been given consent for the discloser suggested. Thus after this entire procedure when the opposition had also no grievance, the trade mark has been registered by the authority as per the certificate of trade mark granted in favour of the petitioner, which is produced at AnnexureG. Not only that, it has been renewed also thereafter. Therefore under the misconception that once the application was there regarding the opposition and it has been not countered, the presumption is made relying upon the provision of Section 21 that it is deemed to have been abandoned. It appears that this Page 17 of 20 C/SCA/13232/2007 JUDGMENT provision has been read in isolation and without reference to other relevant material. As stated above, much progress was made to the knowledge of the registry of the trade mark and it only reflects the manner in which it is functioning and there is a total lack of coordination or communication gap resulting in such kind of litigation.
14. Further as rightly submitted, once the trade mark is registered, as per the provision of Section 31, prima facie it would be an evidence of validly registered trade mark. In other words, once the trade mark is registered, it is deemed to have been registered validly and if anyone has any grievance then, it is for the person, who has grievance to take appropriate measures as provided under the Trade Marks Act, 1999 for removal as provided under Section 47 of the Act. Therefore the remedy would lie under a different procedure and such an order passed by the Assistant Registrar on the ground of abandonment is thoroughly misconceived and such an order is passed under misconception. It is required to be stated that the respondent no.1 is also said to Page 18 of 20 C/SCA/13232/2007 JUDGMENT have confined its objection qua the deceptive material, on the basis of which, discloser has been suggested and the petitioner had accepted that. Further two marks can hardly be said to have any similarity. The mark of the petitioner is "CADIL ORANGE PEEL OFF HOME FACIAL LABEL", whereas the mark of the respondent no.1 is "RESHAM BEAUTY". Therefore as there is hardly any similarity, the grievance could not survive and as rightly submitted, the respondent no.1 is no longer denying even such mark and, therefore, he would not have any locus to contest such petition. Inspite of that, the learned advocate, Shri Parikh made submission that it has to be considered at the relevant point of time relying upon the judgment of the Hon'ble Apex Court in case of Rajahmundry Electric Supply Corporation Ltd. (supra). However, submissions are also devoid of merits as the judgment of the Hon'ble Apex Court has to be read in context and background of the facts. In the instant case, even if there was any grievance or valid grievance, once the respondent no.1 is not having any interest in any such mark, it would be only an academic and would not have Page 19 of 20 C/SCA/13232/2007 JUDGMENT any locus to pursue such litigation and contest such litigation. Therefore on such ground also, the contentions, which have been raised, cannot be accepted.
15. It is required to be stated that some error has been endorsed even by the Appellate Authority without having any reference to the background of the facts and the statutory provision. It only reflects the manner in which the authority has dealt with the issue.
16. It is in this circumstances and in light of the discussion made hereinabove, the impugned order cannot be sustained and the present petition deserves to be allowed.
17. In the circumstances, the present petition stands allowed in terms of Para Nos.8A, 8A1 & 8A2. The impugned order dated 23.02.2007 passed by the learned Board and also the orders dated 28.07.2004 and 03.10.2005 passed by the respondent no.2 and the order dated 25.11.2005 are hereby quashed and set aside. Rule is made absolute to the aforesaid extent.
Sd/ (RAJESH H.SHUKLA, J.) Gautam Page 20 of 20