Madras High Court
(Oa/7/2012/Tm/Ch) vs Deputy Registrar Of Trade Marks on 17 August, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2023:MHC:3784
(T)CMA(TM).No.33 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 17.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(TM).No.33 of 2023
(OA/7/2012/TM/CH)
BASF SE
Carl-Bosch-Strasse 38,
Ludwigshafen am Rhein,
Germany.
(Amended as per order dated 30.03.2012) ...Appellant
Vs.
1. Deputy Registrar of Trade Marks,
Trade Marks Registry
I.P.Building, Guindy,
Chennai – 600 032.
2. Apex Laboratories Limited
No.38, C.P.Ramaswamy Road,
Alwarpet,
Chennai – 600 018. ...Respondents
Prayer: Transfer Civil Miscellaneous Appeal (Patents) filed under Section 91
of the Trade Marks Act, 1999, praying the order of the first respondent dated 1st
July, 2010 be set aside and the application be restored to file and proceeded as
per rules.
Page 1 of 6
https://www.mhc.tn.gov.in/judis
(T)CMA(TM).No.33 of 2023
For Appellant : Mr.P.Siddarth
for M/s.Depenning and Depenning
For R1 : Mr.S.Janarthanan
Senior Panel Counsel
For R2 : Mr.R.Sathish Kumar
JUDGMENT
The appellant impugned the order dated 01.07.2010 by which the appellant's application for registration of the Trademark F-500 in relation to fungicides and herbicides was refused on the basis of the opposition filed by the second respondent herein.
2. The opposition was filed on the ground that the mark of the appellant is likely to cause deception and confusion on account of the use of a similar mark by the second respondent in relation to pharmaceutical products.
3. The appellant has submitted an affidavit affirmed by Mr.R.R.Nair, an authorised representative of the appellant. In the affidavit, in relevant part, it is Page 2 of 6 https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023 stated as under:-
"2. I submit that the instant Appeal has been filed by the Appellant as against the impugned order passed by the 1st Respondent dated 01.07.2010 whereby the 1st Respondent has allowed the opposition (MAS-715554) filed by the 2nd Respondent and had refused registration of the Appellant's trademark 'F 500' bearing Application No.932422 in Class -5. I submit that the 2nd Respondent's goods are pharmaceutical preparation and are for human consumption.
3. Therefore, in order to avoid any confusion with the goods of the 2nd Respondent, the Appellant hereby undertakes that the mark 'F 500' shall not be put to use in respect of any goods that are for human consumption."
4. On instructions, after examining the said affidavit, learned counsel for the second respondent submits that the second respondent is withdrawing its objections subject to the incorporation of the condition/limitation set out in paragraph 3 of the affidavit.
5. In view of the above developments, it is unnecessary to adjudicate the appeal on merits. Instead, it is sufficient to direct the first respondent to Page 3 of 6 https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023 reconsider the application subject to the incorporation of condition/limitation in line with the statement recorded in paragraph 3 of the affidavit.
6. Therefore, (T)CMA(TM) No.33 of 2023 is disposed of by setting aside the order dated 01.07.2010 and directing the first respondent to reconsider the application of the appellant subject to the incorporation of a condition/limitation in line with the undertaking in paragraph 3 of the affidavit dated 12.08.2023. This exercise shall be completed within a period of four weeks from the date of receipt of a copy of this order.
17.08.2023 Index:No Speaking order Neutral Citation:Yes hvk/mkan Page 4 of 6 https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023 To The Deputy Registrar of Trade Marks, Trade Marks Registry I.P.Building, Guindy, Chennai – 600 032.
Page 5 of 6https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023 SENTHILKUMAR RAMAMOORTHY,J.
hvk/mkan T)CMA(TM).No.33 of 2023 (OA/7/2012/TM/CH) 17.08.2023 Page 6 of 6 https://www.mhc.tn.gov.in/judis