Document Fragment View

Matching Fragments

1. By the present petition the Petitioners impugn the order of the second Respondent dated 5.8.1992. By the said order, the second respondent has rejected the notice of opposition filed by the Petitioners opposing registration of the Trade Mark "ACTICEPH" as applied for by the Respondent in Class 5 in respect of Medicinal & Pharmaceutical preparations included in Class 5. The mark on the date of the application was proposed to be used.

Few dates and events may be set out for the purpose of effectively deciding the issues that arise in this petition. On 12.4.1960 M/s. Welcome Foundation Ltd. filed an application for registration of trade mark "ACTIFFD" for restricted specification of Goods. A medicinal preparation for the treatment of allergies, common cold and congestion of the respiratory tract. On 16.4.1961 the trade mark ACTIFFD was advertised in the Trade Marks Journal No. 283 dated 16.4.1961 at page 2833 as proposed to be used. It was granted registration. The petitioner's are the subsequent registered proprietors on assignment of the mark in their favour and notified in Journal No. 723. The mark is renewed and subsisting. On 26.11.1986 respondent No. 1 herein filed an application for registration of their trade mark "ACTICEPH". On 13.12.1988 the Registrar of Trade Marks issued examination report in respect of Respondent No. 1's ACTICEPH mark setting out therein that no mark (whether registered or pending) was cited as conflicting with the trade mark ACTICEPH. The second respondent raised no objection whatsoever. Accordingly on 16.2.1989, mark ACTICEPH of Respondent No. 1 was advertised as accepted in Trade Marks Journal No. 953 dated 16.2.1989 at Page 1286. On 8/13.6.1989, notice of opposition No. BOM 7553 was filed by the Petitioners. In opposition the grounds raised were under Sections 9, 11, 12(1) and 18(1) of the Trade and Merchandise Marks Act, Respondent No. 1 filed counter statement on 29,12.89. They set out therein that no trade mark whatsoever was cited by the Registrar as conflicting with Respondent No. 1's trade mark ACTICEPH. No objection was also raised by Respondent No. 2 to registration "ACITFED" i.e. Petitioner's mark is registered for restricted specification of goods ACTI is common to the Pharmaceutical trade. There were numerous trade marks registered in India having the common prefix 'ACT' and "ACTI". While comparing rival marks much more regard should be paid to the suffix of the mark namely "CEPH" and "FED" than to the prefix "ACTI" which is common to the trade. It was further contended that there was no likelihood of confusion.

2. The Petitioners in support of their opposition filed affidavit of Mr. D.C. Tanna. Some correspondence was exchanged between the Attorneys for the Respondent No. 1 and Petitioner's Attorneys. On behalf of the Respondent No. 1 Mr. Egon E. Berg, Assistant Secretary of Respondent No. 1 filed affidavit in support of their application. With the affidavit, examination Report was annexed as Exh. A and Exh. B1 were the list of registered (17+1) and pending trade marks (20) in India having common prefix "Act" & "ACTI" Exh. C is the list of trade marks from Indian Pharmaceutical Guide 1990 edition having prefix "ACT/ACTI" which are actually being sold in the market (19 in number). Exh. D1 and D-2 is the International Index of Pharmaceutical Trade Marks (1989/90, 13th Edition) published by IMS which contains nearly 280 trade marks with the common prefix "ACTI" as registered in various countries of the world. To the said affidavit, Mr. Tanna on behalf of the petitioners has filed his affidavit in rejoinder on 29.6.1991. On 20.9.1991 Respondent No. 1 filed an application in Form TM-16 in the Trade Marks Registry to amend the specification of goods in respect of the Trade Mark "ACTICEPH" to read as follows:

(b) Considering the finding of the second Respondent, that there is no evidence by the first Respondent that the Word ACTI or ACT is common to trade, the subsequent finding the word ACTI must be having some medical significance having some descriptive meaning, is not based on any evidence and is a mere conjecture and is contrary to his own findings that the first Respondent had led no evidence to show that the word "Act" or "Acti" is common to trade.

The second Respondent has committed error by placing greater emphasis on the suffix "FED" and "CEPH" and not comlying the words ""Actifed"" and "Acticeph" as a whole.

As noted earlier, the petitioners have critised that finding on two counts firstly that no evidence to that effect was led by the first respondent and that the said finding has not been challenged and secondly that the Registrar should not decide the issue on assumption, presumption and conjecture. At this stage, it may be pointed out that the Respondent who has succeeded could not have preferred appeal against the finding. It will be still open to the said respondent to come before this Court and point out material on record in support of said finding. Considering that, we may now proceed to consider that aspect of the matter. In Butterworths Medical Dictionary, Second Edition, 1978 i.e. much earlier to the application by the first respondent for registration, the part of the word Acticeph namely "Act" has been defined. There are several words having prefix "Act" and "Acti" which are chemical preparations and which are defined in the said dictionary. Similarly in Butterworths Medical Dictionary, printed at least eight years before petitioner adopting their trade mark Acticeph, the prefix "Act" and "Acti" occurs prominently. There were atleast 60 words. The word "Act" and "Acti" have medicinal significance and some descriptive meaning and to that extent the Registrar was right in coming to the conclusion. The trade mark ACTWADERM (179851) in the list of Trade Marks having the prefix ACT and ACTI are given and which were registered in the Register of Trade Marks much prior to the date on which the trade mark ACTIFED (195419) of Petitioners was applied for and are given in Exhibit B to the affidavit of Mr. Egon E. Berg dated 14.2.1991 in support of application for "ACTICEPH". At Exh. "C" there are brand names with prefix ACT and ACTI as appearing in the Indian Pharmaceutical Guide and at Exh. "B" the list of trade marks registered with common prefix ACT and ACTI are given. The International Index of Pharmaceutical Trade Marks 1989-90, 13th Edition published by INS list many trade marks (including some of those of the petitioners) having the prefix ACT and ACTI.