Trademark Tribunal
A. Krishna (Dr.) vs Research Drugs & Pharmaceuticals ... on 31 December, 2001
Equivalent citations: 2002(25)PTC677(REG)
JUDGMENT
Dharam Singh, ARTM
1. A Trade Mark consisting of word 'LUDEM' was applied for registration in class 5 in respect of Medicinals & Pharmaceuticals Preparations by the above named applicants under Application No. 456381 dated 3.7.1986 as "proposed to be used" under the provisions of Trade & Merchandise Mark Act, 1958 (hereinafter referred to as the Act). Eventually, the Mark was advertised before acceptance in Trade Mark Journal No. 967 dated 16.9.1998 at page 751.
2. The above named opponents expressed their intention to object to the registration of the impugned application by filing the subject opposition dated 11.12.1989 inter alia stating the grounds of opposition was follows :-
1. That the opponents carry on a well established business as manufacturers, dealers, exporters in Medicinal & Pharmaceutical Products for last several years under the Trade Mark 'LUDEM' with their other trade marks.
2. That the opponents adopted the trade mark 'LUDEM' on or about February, 1986 and they had been continuously and extensively using the same in respect of their products since then.
3. That the opponents for the security of their trade applied for registration the trade mark 'LUDEM' under application No. 517904 dated 15.10.1989, which is in advance stage of registration process.
4. That by virtue of continuous use and quality maintained in respect of product, the opponents' trade mark 'LUDEM' has come to associate with the public and trade in relation to the opponents' goods and their name and it has acquired a considerable reputation and goodwill in the market.
5. That the trade mark sought to be registered under the application No. 456381 comprises the same word 'LUDEM' and the goods in respect of which the registration is sought are the same as those covered under the opponents' trade mark and registration of the impugned application will be prohibited under Section 12(1) of the Act.
6. That the use of the impugned trade mark by the applicants in relation to the medicinal and pharmaceutical preparations besides being prejudicial to the opponents' interest, would inevitably lead to confusion and deception among the trade and public as they are likely to assume that the products would be coming from the trade source of the opponents and thus, the impugned mark offends under Section 11(a) of Act.
7. That the impugned trade mark 'LUDEM' being identical with or deceptively similar to the opponents' trade mark is neither adopted to distinguish nor capable of distinguishing the applicants' goods and the same had been applied for registration without bona fide intention to be used in the course of trade. Moreover, the applicants' are neither manufacturers nor merchants and they are not possessing the requisite Drug Licence from the Competent Authority for manufacturing the Medicinal & Pharmaceutical products as required under the provisions of Drugs & Cosmetics Act, 1940 and are also not holding sales tax registration from the concerned sales tax authorities, which is essential for the applicants' to sell the medicines in the market. So, the mark is not registrable within the meaning of Section 9 of the Act.
8. The opponents caused a registered A.D. letter to the applicants calling upon them to withdraw the impugned application, but they failed to do so. Although, they have not been manufacturing and selling the medicinal & pharmaceutical products during the course of trade.
3. Finally, the opponents prayed this Tribunal to refuse registration of the impugned application with an order as to costs in their favour by exercising its discretion under Section 18(4) of the Act, adversely to the applicants.
4. In their Counter-statement filed on 26.9.1990, the applicants denied all the allegations made in the notice of opposition beyond what was the matter of record and specifically admitted by them. The applicants stated that they were the proprietors of the trade mark 'LUDEM' and being a Doctor they had been in practice of Dermatology as a skin specialist, since the year 1961 on his return after completion of his specialised training in Dermatology in USA and he had always been prescribing complicated dispensed products to his patients from the beginning of his practice. It was added, that the word 'LUDEM' was solely invented by The applicant after deep mental thought and consideration and had been widely used for his dispensed products given in the treatment of Vitiligo, i.e. leucoderma (white patches on the skin where the background cell temporarily lose their capacity to form pigment or colour and the skin gets depigmented). The applicants stated that they were first in adoption applying for registration the trade mark 'LUDEM'. They contended that they made a search with Trade Mark Registry, Madras as there was no similar trade mark on the record, the applicants applied for the impugned trade mark under No. 456381, which was earlier to the opponents application. The applicants' further stated that they had been using the trade mark for the past 29 years by prescribing the same to the patients and the patients had been purchasing the product from their dispensed unit and the opponents perhaps by seeing the advertisement of the impugned application in Trade Mark Journal, filed their application No. 517904 after more than three years from the date of the impugned application and thus the applicants had been using the impugned trade mark 'LUDEM' much prior to the use by the opponents and were entitled for registration under Section 33 of the Act on longer user. Lastly, the applicants requested this Tribunal to exercise it's discretion vested under Section 18(4) of the Act, adversely to the opponents by dismissing the subject opposition and allowing registration of the impugned application with an order as to costs in their favour.
5. The opponents filed evidence under Rule 53 in support of notice of opposition by way of an affidavit dated 7.12.1990 of G. Gopal Rajan, Director of the opponents' company stating and affirming therein annual sales turnover of the opponents', goods sold under the said trade mark 'LUDEM' from the year 1986 to the year 1989 alongwith documents such as wrapper of medicine, the first sale invoice, drug licence and approval of medicines from the Competent Authority and sales tax registration. The applicants filed evidence in support of application by way of an affidavit dated 9.7.1991 of Dr. A. Krishna alongwith some documents marked as Exhibits - 'A' to 'F.
6. Eventually, the matter was set down for hearing first time on 27.12.2000. After adjournment of the first hearing, ultimately, the matter came up before me for hearing on 23.2.2001, when none appeared for hearing. However, the opponents Attorney, H.K. Acharya & Co. notified his intention to appear for hearing on behalf of the opponents by filing a request on Form TM-7 under Rule 59. Mr. V. Balakrishnan, Regd. Trade Marks Agent vide his letter dated 17.7.2000 submitted that the applicants wished the opposition proceedings to be decided on merits so, he did not intend to appear for hearing fixed on 23rd Feb., 2001.
7. The opponents' Attorneys M/s. H.K. Acharya & Co. vide their letter dated 1.8.2000 submitted the written arguments on behalf of the opponents as follows :-
"We are the company incorporated in India under the Companies Act, 1956, have filed Notice of Opposition intending to oppose application No. 456381 in class 5 in the name of Dr. A. Krishna which has been published in Trade Marks Journal No. 967 dated 16.9.89 on page No. 751 for registration of trade mark 'LUDEM'.
8. We are proprietors of the trade mark consisting of the word 'LUDEM' which has been invented and adopted by our company in or about February, 1986 in respect of pharmaceutical and medicinal preparations and since then has been extensively, uninterruptedly, openly and continuously used by us. We have applied the same for registration which is pending for registration being in very advance stage of registration.
9. The applicant has sought for registration of trade mark 'LUDEM' bearing application No. 456381 on 3.7.86 as "Proposed to be used" in class 5 in the name of Dr. A. Krishna, Skin & Cosmetology Clinic, which has been published and ultimately we have opposed the same on the grounds of identical or deceptive similarity and prior use. We contended that applicants have not started to use the mark bona fidely. Being a manufacturer of pharmaceutical and medicinal preparations, the license to manufacture the same is required to be obtained under the Drugs and Cosmetics Acts, 1940, which is not held by the applicants, even though applicants claimed themselves the manufacturers of drugs. It is also require to obtain Sales Tax Registration Certificate essential for treading under the Tamilnadu Sales Tax Act, which is not held by the applicant, even though applicants have stated that they are trader of drugs. In these circumstances how the applicant can claim proprietorship over the trade mark 'LUDEM' even though they are not proprietor of said trade mark. It is quite clear that applicants never had any bona fide intention to use the mark, therefore, the application deserves to be dismissed.
10. It may be appreciated that we have served legal notice upon applicants through registered post A.D. to withdraw the said application, copy of which was enclosed with the Notice of Opposition.
11. We submit that our mark 'LUDEM' has become very popular and have acquired tremendous reputation in respect of pharmaceutical and medicinal preparations as it being used since the year 1986 continuously, uninterruptedly, openly and extensively through out the country. We have produced several documents in support of our claim for the use of trade mark 'LUDEM' since 1986 which please take into consideration. We have produced copy of first sale bill, labels and copy of approval from drug department showing our adoption from 1.1.86 which is required to be exhibited as it may satisfy the Hon'ble Tribunal that we are using the mark LUDEM since the year 1986.
12. The applicants have filed counter-statement on Form TM-6 on 26.9.90 and evasively denied the contents of our notice of opposition and claimed that the word 'LUDEM' was solely invented by applicants after deep mental thought and consideration which is wrong because the applicants were not even in market with their product under trade mark 'LUDEM' at the time of adoption as alleged. However, applicant have imitated well reputed trade mark of us with mala fide intention to pass off their goods as that of our goods under impugned trade mark with a view to gain undue advantage from the market established by us. At this stage we would like to draw the kind attention of Tribunal towards the statement made by the applicant that the applicant had to necessarily use a name for any product when individual dispensing came in the treatment as the applicant's patient. We say that to dispense the medicine by the doctor is not trading. To check the distinctiveness of trade mark goods is to be traded.
13. It is very surprising that applicant filed form TM-16 on 24.9.90 amending the user of their trade mark as since 1974 which is after the opposition have been filed, therefore, we have taken objection Form TM-16 to be recorded through letter on 22.11.90, which clearly shows the misconduct of applicant to falsely establish the prior user of trade mark. It is pertinent to note that if the mark is being used since 1974 according to applicants' own statement, why they have applied as proposed to be used and such type of amendment cannot allow as per the Act and applicants request for amendment cannot be allowed as per the Act and only deserves to be rejected. At this juncture we would like to draw kind attention of the Tribunal towards provision of Section 18(1) which read as under :-
"Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the Prescribed manner for registration of his trade mark either in part A or part B of the register".
14. So Section 18(1) clearly says that the application for registration of a trade mark may be either for a mark which is already in use in the market, or for a new mark which is "proposed to be used". Mark was applied for as "proposed to be used" by the applicant just because he had intended to use it in near future, applicant is not entitled to say that due to inadvertence, application was filed stating the usage therein as "proposed to be used", which clearly shows mala fide intention on the part of applicant. Moreover, applicants have not put any strict proof in support of their so called usage of the mark since 1974. In fact applicant is not using the mark since 1974, on the contrary we are using the mark since the year 1986 which is much prior to the applicant, and therefore, the application No. 456381 in class 5 is required to be refused on these grounds. Further applicant has stated that he is the first person to adopt and use the trade mark 'LUDEM' which is false, frivolous and baseless and cannot be considered without any documentary evidences in support of his claim.
15. We humbly state before the Hon'ble Tribunal that applicant has himself admitted in para No. 7 on page No. 5 of the counter-statement that he never claimed to be manufacturer or a merchant of medicine, but he do possess a valid medical degree which entities him the right to practice and to prescribe and dispense medicines under the mark 'LUDEM'. On this statement we reply that just by holding degree of Medicine and by dispensing drugs for patient, applicant cannot claim proprietorship for such medicines. Degree entitles the applicant to dispense medicines and not to produce and/or sell medicines because there is no trading of course law also never permits so to do.
16. The applicants have falsely created story of Mr. Parthasarathy trying to mislead the Hon'ble Tribunal as there is no substance in the said story because the story created by the applicant is irrelevant to this case.
17. So far as question of the writing (R) in batch No. 109, Mfg. of 12/88 is concerned, it is clarified in para No. 13(g) of our Affidavit that it was printed just by mistake on the part of our printer but it is printed on that batch only. However, that is our bona fide mistake and we never intended to recognize our mark as registered at all, moreover this issue does not concern with this case of opposition. The labels produced with our affidavit in support of opposition, contents of which are very much crystal clear that the (R) is not printed over there.
18. We have filed an evidence in support of opposition through Affidavit of Shri S. Gopalrajan under Rule 53, contents of which may be taken on record as well as documents produced alongwith it may also be taken into consideration in the interest of justice. The facts and issues are pleaded very much in detail in this affidavit which is required to be considered, the sale figures of the product sold by the opponents under the trade mark 'LUDEM' since the year 1986 is also contended in para No. 6 of the said affidavit. On the contrary, applicants have not produced any such sales figures of their product sold under trade mark 'LUDEM' as alleged by them, which also to be considered.
19. In reply to said affidavit under Rule 53, the affidavit of Dr. A. Krishna is filed by way of evidence in support of application under Rule 54 contents of which are contrary and inconsistent with whatever stated in their counter-statement and material on record; It is to be said that user since 1974 has now been altered by the applicants by stating that they have adopted the mark in the year 1973, but applicants have not produced even single documentary proof in support of his claim. All the documents produced by the applicants marked as Exh. 'A' to Exh. 'G' are inconsistent itself with the contents whatever pleaded in counter-statement and affidavit which are not relevant to this case. By supporting documents, the applicants are not able to prove the case in their favour and, therefore, counter-statement and affidavit in support of application are required to be rejected and opposition may be allowed.
20. In counter-statement, the applicant himself admitted that he never claimed to be manufacturer on merchant and now in affidavit, it is mentioned in para No. 3 on page 2 by the applicant that "that LUDEM Capsules were dispensed by me and I have been selling the same to my patient", which is contradictory statement to each other. They copy of so-called bills of Dermprep Dispensed Mermatologicals vide Exh. 'B' are of 1987 and not earlier, it means the said firm was not in existence before the year 1987, which may please be take into consideration. The copies of receipts produced by applicant vide Exh. 'C' do not prove the use of trade mark 'LUDEM' as alleged by applicants, though applicant have not produced sale bills since the year 1974. Hence, applicant cannot claim to be the prior user and proprietor of the mark used since 1974. All the prescription produced by the applicant vide Exh. 'D' are fraudulent and fabricated, prescription of drugs are not valid documentary evidence to prove the claim of usage of mark, because any one can create prescription in any name at any time and of any date, so these are not valid documents and cannot be taken into consideration as prescription is not the trading.
21. On the one hand applicant himself admitted that he is not manufacturer and merchant of drugs and on the other hand in para No. 14 of the affidavit stated that he has already started making arrangements to commercially market the product on a regular trade-basis through a small scale manufacturing unit, which is very surprising and inconsistent with law because applicants have not produced copy of sales tax registration and licence which is required to manufacture the drugs under the Drugs and Cosmetics Act, 1940 and, therefore, applicant's claim is baseless and false.
22. On the basis of above arguments we say that we have a good prima facie case and balance of convenience is in our favour, therefore, it is requested that Opposition may be allowed and Application No. 456381 in class 5 in the name of applicants may be refused and cost of the proceedings be awarded to us."
23. As summarized in para 10 of notice of opposition, the objections raised by the opponents come within the ambit of Sections 9, 11(a), 12(1)and 18(1) of the Act.
24. In the present case, Dr. A. Krishna, the appiicants had applied for registration the impugned trade mark in respect of medicinal and pharmaceutical preparations in Class 5. The opponents filed the subject opposition objecting to the registration of the present application alleging that they were the proprietors of trade mark 'LUDEM' and had been using the said mark since Feb., 1986 in respect of medicinal and pharmaceutical preparations and applied for registration under application 517904 in class 5, while the applicants being a Doctor by profession could not be the proprietors of the mark within the meaning of Section 18(1) of the Act and the statements regarding user and trade description being contradictory and inconsistent and evidence filed by the applicants in support of the application to prove the usage of the mark could not be considered relevant at all.
25. Since both the opponents and applicants have claimed similar rights over the trade mark 'LUDEM', at the outset, the question to be determined is whether the impugned trade mark has been used by the applicants bona fidely in the course of trade. If so, who is first in adoption and use of the trade mark between the rival parties? Section 2(1)(V) of the Act lays down as under :-
"A trade mark means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in course of trade between the goods and some person having the right as proprietor to use the mark".
26. Simultaneously, the provisions for filing an application for registration under Section 18(1) of the Act are as follows :-
"Any person claiming to be the proprietor of a trade mark 'used' or 'proposed to be used' by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for registration of his trade mark cither in Part 'A' or in Part 'B' of the register."
27. The impugned trade mark was propounded for registration by the applicants as "proposed to be used", and subsequently advertised in Trade Mark Journal No. 967 dated 16.9.1986 as "proposed to be used" only, but at the instance of filing the subject opposition proceedings, the applicants amended the date of usage of the impugned trade mark to read as "since the year 1974" by filing a request on Form TM 16 dated 25.9.1990 and called for registration on a longer and prior usage under Section 33 of the Act. While filing evidence in support of the application by way of his affidavit without stating and affirming annual sales turnover of their goods therein, the applicants Dr. A. Krishna affirms and states to have used the impugned trade mark in his dispensed unit, namely 'Dermprep Dispensed Dermatologicals' by prescribing the medicines to their patients since the year 1974 and in support of the said affidavit, the applicants attached a few copies of bills pertaining to the applicant's dispensary through which the medicines are stated to have been supplied to the patients, a few copies of fee receipts for consultations, a list of patients, a few copies of prescriptions given to the patients and a list of patients on which the research is stated to have been conducted by the Doctor. Here, firstly, the evidence filed by the applicants' by way of affidavit without stating and affirming annual sale figures therein has least evidentiary value under Section 99 of the Act at the instance, when the applicants' specifically have claimed the usage of the mark since year 1974 by filing a request on Form TM-16. Secondly, copies of bills and prescriptions annexed to the said affidavit lead to an inference that the mark has been used by the applicant during his profession as a doctor within his clinic premises and there is no proof that the applicants' goods have been sold in the market beyond the limits of dispensary. In view of the meaning of trade and Trade Mark and the provisions contained in Section 18(1) of the Act, prescribing and/or selling medicines by the applicant under the impugned trade mark 'LUDEM' to his patients for reimbursement from their employers within the premises of his dispensed unit does not amount to have been sold in the market and cannot be considered as sale of the medicines during the course of trade. In other words prescribing medicines to his patients by a doctor is not trade. According to the provisions, a trade mark whether the 'use' or 'proposed to be used' is always in relation to the goods and indicate a connection in the course of trade between the goods and the person having the right as a proprietor to use the mark. However, the list of patients and copies of fee receipts have no bearing as regards to the mark, hence are not considered relevant.
28. Further, the question arises whether the applicant is manufacturer/trader. According to the trade description mentioned in the impugned application, the applicants have claimed to be the manufacturers and merchants and it has been stated and affirmed in para 3 of the applicants' affidavit "The LUDEM CAPSULES dispensed by me and I have been selling the same to my patients" but at the same time in para 7 of the counter-statement, the applicants have stated that they have never claimed to be manufacturers or merchants. Being the applicants' statements as contradictory and inconsistent cannot be relied by this Tribunal. Nevertheless, they have claimed to be the manufacturers/merchants in the impugned application, hence it is essential for them to have a Drug licence to manufacture the medicinal products and sales tax registration to sell their products in the market from the competent authorities under the Drug & Cosmetics Act, 1940 and the Tamil Nadu Sales Tax Act, respectively. The applicants cannot manufacture and sell their products without the aforesaid requisite documents, although the applicant being, MBBS, may be a qualified doctor and may have some knowledge in Ayurvedic Branch of Medicines or has a sound knowledge of research on drugs and medicines. He cannot manufacture the medicines and drugs until unless he is in possession of the requisite Drug licence from the competent authorities under the Drug & Cosmetics Act, 1940 and cannot sell the product commercially without obtaining registration from the Sales Tax Authorities with the Tamil Nadu Government. If he does so, it is violation of the law and amounts to have committed an offence under the aforesaid statutes and his business itself cannot be protected under the Law. Alternatively, if I consider the applicants' statement made in para 7 of counter-statement and affirmed in para 17 of his affidavit that he has never claimed to be a 'manufacturer' or a 'merchant', it leads to an inference that the applicant has no bonafide intention to use the mark in question and he might have applied for registration for an ulterior motto by putting false trade description, otherwise how a trade mark can be applied for without trade description. Para 5.09 of Book on Trade Marks and passing off by P. Narayan (4th edition) lays down "the words 'proposed to be used' read in the context of Section 45 and Section 46(1)(a) would suggest that the applicant for registration must have a present and definite intention to use the trade mark in relation to goods in respect of which registration in sought" in Batt's trade mark (1898) 15 RPC 534(CA) at 538, (1899) 16 RPC 411(HL) Lindley MR observed that "A man cannot properly registered a trade mark for goods in which he does not deal or intend to deal meaning by intending to deal having at the time of registration, some definite and present intention to deal in certain goods or description of goods, and not a mere general intention of extending his business at some future time to anything which he may think desirable. The Trade Mark Registration Act presupposes some business or trade in some kind of goods made, sold or otherwise dealt within the way of business". Although, the applicants have filed so called evidence under Rule 54 and made an unsuccessful efforts to establish the user of the mark since the year 1974 yet the use of the impugned mark 'LUDEM' by the applicant during the course of his profession as a doctor within his dispensed unit is irrelevant and cannot be considered as use during the course of trade. Moreover, it cannot be termed as a use of the mark at all. Further, they are not manufacturers/merchants and appear to have no clear and definite intention to use the mark at the time of the application. In view of my finding that use of the mark by the applicants is not use at all, I am agreeable with the opponents view that filing of TM-16 to amend the usage of the mark by the applicants to read as since the year 1974 was dishonest and ill founded as they might be aware of use of the mark "LUDEM" by the opponents since Feb., 1986. "If the applicants had not at the time of application a sufficiently present and unconditional intention to use the mark to bring themselves within Section 18(1), the Registrar may refuse the application in the exercise of his discretion." RAWHIDE, (1962) RPC 133 at 143.
29. On the other hand, the opponents have claimed the proprietary right over the trade mark 'LUDEM'. They have filed evidence under Rule 53 in support of opposition by way of an affidavit of S. Gopalarajan, a Director of the opponents' company alongwith supporting documents affirming and stating therein the annual sales figure of their product sold under the said trade mark 'LUDEM' from the year 1986 to 1989. The trade mark 'LUDEM' is affirmed and stated to have been used by the opponents since Feb., 1986 vide para 3 of their aforesaid affidavit. The annual sales turnover of the goods have been affirmed and stated in para 6 of the said affidavit The opponents' first sale invoice dated 13.2.1986, Drug Licence and Drug Contents Approval both dated 1.1.1986 from the Director of Food & Drug Administration. Sales Tax Registration Certificate dated 11.2.1986 from the competent Sales Tax Authorities and a wrapper (sample) of the opponents' product bearing 'LUDEM' Capsules containing description matters annexed to their said affidavit which can all be seen corroborated the use of the trade mark 'LUDEM' claimed by the opponents since 13.2.1986. The opponents invoice dated 13.2.1986 shows that the commercial sale of the opponent's product 'LUDEM' Capsules worth of Rs. 1963.50 with other medicines/drugs was first time affected on 13.2.1986. Thus, the evidence filed in support of opposition leads to an inference that the opponents have been using the said trade mark from 13th Feb., 1986 onwards with their other brands during the course of trade. The opponents' appear to have adopted and use the mark prior to the applicants' adoption and use and they seem to be the proprietors of the mark. In view of this, since the question of proprietorship of the mark is almost established, the detailed examination of the opponents' objections needs not necessarily be required. However, in the interest of justice, I deal with the aforesaid objections one by one.
30. First of all, I will take up the opponents' objections raised under Section 9 of the Act. This Section prohibits registration of trade mark on the ground of registrability. While invoking this Section, the opponents alleged that the impugned trade mark being identical with or deceptively similar to the opponent's trade mark 'LUDEM' was neither adopted to distinguish nor capable of distinguishing the applicant's goods. As regards the registrability of impugned mark is concerned, para 8.70 of P. Narayanan's book on Trade Marks and Passing of (4th Edition, page 131) lays down "the test of acquired distinctiveness is that the trade mark when applied to the goods should indicate to the purchaser that they are the goods of a particular person and of nobody else. Distinctiveness must carry with it the feature that the goods distinguished are the goods manufactured by a particular person or coming from a particular source and by no other. A word or words to be really distinctive of a person's goods must generally speaking be incapable of application to the goods of anyone else". (Chivers v. Chivers, 17 RFC 420 at page 430 and Shredded Wheat, 55 RFC 125 at page 145). In the present case, since the opponents on the basis of evidence seem to have adopted and used the mark prior to the applicants' adoption and use and the impugned trade mark is likely to cause confusion and deception, it does not speak to be incapable of application to the goods of the opponents, hence the same is not adopted to distinguish. The opponents' objection raised under Section 9 of the Act is sustained.
31. Now, I will deal with the opponents' next objection raised under Section 11(a) of the Act. This Section is invoked on the allegation that the impugned mark is likely to cause confusion and deception among the public and trade. This objection is ap patently based on the alleged use and reputation of the opponents's trade mark 'LUDEM' under Section 11(a), before the objection can be sustained, it is necessary for the opponent to establish a reputation in trade in connection with the said mark, 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 as held in Arthur Fairest's Appln. (1951) 68 RFC 197 at page 207 and Hayakawa Electricity v. Associated Electronic (1974) 1 MLJ 392. Reputation is a question to be established by evidence. The burden of proof is on the person who alleges reputation. The material date for establishing, it is the date of an application for registration, since the rights of the parties are to be determined as on that date. The Registrar or Court will not take into account events which have happened after the material date as held in Pan Press case (1948) 65 RFC 493 at 497. Keeping all these time tested and well established legal principles, let me consider whether the opponents have discharges onus cast upon them to establish the use and reputation. I have already examined the opponents' as well as the applicants' evidences in the aforesaid paragraphs. It appears from the evidence filed by the opponents that they conceived and adopted the trade mark 'LUDEM' even before 1986, when they applied for the requisite Drug Licence and Sales Tax Registration. They obtained drug license and Drug content approval from the competent authority on 1.1.1986. They also obtained sales tax registration from the Sales Tax Authorities on 11.2.1986 and commenced the commercial sales of their product under the trade mark 'LUDEM' first time on 13.2.1986 and had been using the said trade mark bona fidely during the course of trade since 13.2.1986. Thus, the use and reputation claimed by the opponents is exhibited by them.
32. While examining the applicants' evidence it is revealed that the impugned mark has not been used during the course of trade. It has been used in his dispensary by the applicant during the course of his profession as a doctor, which cannot be considered as use of mark during the course of trade at all. The use of trade mark under Section 9(5)(b) must be used as a trade mark that is, to indicate trade origin - Hospital World TM (1967) RFC 595. 'Hospital World' refused in respect of periodicals and publication. The applicants were manufacturers of surgical and medical dressings. They used the publication only as a vehicle for advertisement of their goods and not as a part of their trade. See also - 'Update' TM (1979) RFC 166 ; 'Update' refused in relation to printed matters, Applicants' business activity was that of advertising, the journal being their medium and its free distribution part of their services.
33. Moreover, the applicants did not obtain the requisite drug license and drug contents approval from the competent authority under the Drugs and Cosmetics Act, 1940 and also not obtained sales tax registration certificate from the concerned sales tax authorities. Thus, manufacturing and selling of medicinal products if any by the applicants without the said requisite documents from the competent authorities is itself illegal. Even otherwise copies of so called bills of Dremprep Dispensed Dermatological annexed to the applicant's affidavit as Ex. 'B' pertains to the year 1987, i.e. the post period to the date of impugned application and copies of few receipts of the professional fees charged by the doctor for the year 1974 do not bear the trade mark in question, therefore, the same having no bearing as regards the trade mark are considered irrelevant. Thus, the applicants have failed to adduce any material evidence in support of use as a trade mark within the meaning of trade and trade mark. In the absence of material evidence, the use and adoption of the mark by the applicants is deemed to be false and dishonest and their claim of prior user since the year 1974 is rejected. I do not agree with the applicants' view that they have been using the impugned mark much earlier to the opponents' use and are entitled for registration on longer user under Section 33 of the Act. At the point of time, when the opponents obtained the requisite Drug Licence and Sales Tax Registration from the competent authorities on 1.1.1986 and 11.2.1986 respectively, the applicants were not in inception of the mark and even the impugned application was filed later on 3rd July, 1986, the applicants' contention that opponents after seeing the advertisement of this mark in Trade Marks Journal applied for registration has no bearing at all, although, they filed the impugned application first as 'proposed to be used'. Since the opponents, conceived and adopted the trade mark 'LUDEM' prior to the adoption by the applicants and even before filing the impugned application and had been continuously using the same since 13.2.1986, the use of the mark by the applicants even during his profession as a doctor is likely to cause deception and confusion among the Public and trade. Hence, the objection raised under Section 11(a) is sustained.
34. Next, I will proceed to examine the opponent's objection raised under Section 12(1) of the Act. As per statute an objection under Section 12(1) of the Act can be maintained only and only if the opponents rely upon a registered trade mark belong-ing himself or even to third party. However, in the present case the opponents have not relied upon any registered trade mark. Even the application sought to be relied upon is subsequent to the impugned application, and therefore, does not constitute a valid ground for invoking the provisions of Section 12(1) of the Act. The objection raised under Section 12(1) is rejected.
35. Now, I will examine the opponents' objection raised under Section 18(1) of the Act. While invoking this objection, the opponents alleged that the applicants were not the proprietors of the trade mark and the said mark had not been applied for with a bona fide intention to use the same as trade mark. While examining evidence filed by the rival parties in the aforesaid paragraphs, as the opponents' use of the mark is held prior and bona fide they are considered to be the rightful owners of the mark and the applicants' claim that they are first in adoption and use of the mark and have been using the same since the year 1974 is false and dishonest and cannot be admitted on the following grounds :-
(1) The mark was not in use by the applicants, when they filed the application for registration, as 'proposed to be used', and on filing of the subject opposition by the opponents the applicants amended the usage of the impugned trade mark with a mere intention to defend their case. Otherwise, had the applicants used the mark since the year 1974, they would not have committed a blunder by applying the mark in question as 'proposed to be used'.
(2) The applicants did not obtained the requisite documents namely drug licence, sales tax registration certificate, etc. from the competent authorities as per statute, the manufacturing and selling their products in the absence of the aforesaid requisite documents itself is illegal.
(3) The use of the mark by the applicants after the date of application, if any, has not been in the course of trade within the meaning of trade and trade mark. The use of the mark within the clinic of Dr. A. Krishna cannot be termed as use of the mark in the course of trade at all.
(4) As the applicants had never been manufacturer/traders, how could they claim the impugned mark to have been used as a trade mark in the course of trade.
36. The applicants in no way can be called the proprietors of the mark under Section 18(1) of the Act, and the objection raised by the opponents is sustained.
37. Finally, I am called upon to exercise the discretion vested in me under Section 18(4) of the Act. Having sustained the opponents' several objections under different Sections, I find no reason to exercise my said discretion, adversely to the opponents. Further, I am satisfied that they are the proprietors of the mark and the applicants' claim regarding prior and bona fide user is devoid of merit, hence the same is rejected.
38. As a result, Opposition No. MAS-2331 is allowed and Application No. 456381 in class 5 is refused registration.
39. It is hereby further ordered that the applicants shall forthwith pay the opponents a sum of Rs. 265/- (Rupees Two Hundred and Sixty Five Only) as costs of the present proceedings.
40. Sealed and signed at the Trade Marks Registry, Chennai (Branch) on this the 31st day of December, 2001.