Madras High Court
Lupin Limited vs Tablets (India) Limited on 17 November, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
(T)CMA(TM)/57/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 17.11.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/57/2023
(OA/5/2016/TM/CHN)
Lupin Limited
having its registered office at
159, CST Road, Kalina
Santacruz (East)
Mumbai-400 098. ... Appellant
-vs-
1.Tablets (India) Limited
No.179, T.H.Road
Chennai-600 081.
2.The Registrar of Trade Marks
Trade Marks Registry
Chennai Intellectual Property Office
GST Road, Guindy
Chennai-600 032. ... Respondents
PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed
1/8
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/57/2023
under Section 91 of the Trade Marks Act, 1999, to allow the present
appeal; to set aside/recall/quash the order dated 29.10.2015.
For Appellant : Ms.Antara Balaji
for M/s.Rajesh Ramanathan
For R1 : Mr.S.Rajasekar
For R2 : Mr.A.R.Sakthivel, SPC
JUDGMENT
The appellant assails an order dated 29.10.2015 by which Opposition No.MAS-725546 was rejected and Application No.917677 in Class 5 in relation to the Trade Mark "CEFTRIL" was accepted for registration.
2. The appellant was the opponent before the Registrar of Trade Marks and lodged the Notice of Opposition upon noticing the advertisement in relation to the impugned mark "CEFTRIL" in Trade Mark Journal No.1387, Regular, dated 01.03.2008. In support of the opposition, the appellant filed an affidavit by way of evidence of 2/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 Mr.R.Kumar, its Senior Manager - Legal. After hearing the applicant and the opponent, the opposition was rejected by the impugned order.
3.Learned counsel for the appellant invited my attention to the impugned order and pointed out that the conclusion in internal page 4 of the said order is completely erroneous inasmuch as it is recorded therein that the appellant did not use the mark and merely obtained registration. By relying upon paragraph 10 of the affidavit by way of evidence, learned counsel submitted that the appellant annexed Exs.B and B1, being the statement of sales and promotional expenditure of products sold under the trade mark “CEFF” since the year 1985. Learned counsel also pointed out that copies of invoices pertaining to sale of products bearing the trade mark “CEFF” were annexed as Exs.C to C39.
4. Learned counsel for the 1st respondent has placed on record a communication dated 26.10.2023 indicating that the 1 st respondent does not intend to contest the appeal and is agreeable to file an 3/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 application for cancellation of the registration before the Registrar of Trade Marks.
5. The operative part of the impugned order is as under:
“I have heard the arguments of the applicant's counsel and have gone through the records of this case. In the instant case, the opponent has filed evidence in support of opposition under Rule 50 along with supporting documents in support of use of their mark. Though, the applicant has not filed evidence in support of application under Rule 51 to substantiate the use of the mark CEFTRIL, however, they have filed some invoices for the years 2001, 2007 at the application stage in order to substantiate the use of the mark. Further, it is found from the search report of the impugned application that there are several marks containing the word CEF as prefix on record. It seems from the opponent's evidence that the opponent's mark CEFF is used in day to day infections such as URTI's – Pharyngitis, Bronchitis, Laryngitis, Sinusitis, Tonsilitis & Skin - Soft Tissue infections – Boils, Carbuncles. The applicant's mark is used for Ceftriaxone Injection as 4/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 Antibiotic. In the instant case, though the opponent has filed evidence in support of opposition under Rule 50 along with supporting documents, however, they have not contested the case properly and either his counsel or he himself has turned up for the hearing and has not filed written submission, TM-
7, TM-56 and also not appointed subsequent Agent to act for the opponent to prosecute the case, in spite of enough opportunities for this purpose. So, it is presumed that the opponent has lost their interest in prosecuting case. On the other hand, the applicant has properly contested the case and attended the hearing, though they have not filed evidence in support of application at the prescribed time. In the circumstances, I am of the view that the applicant is interested to protect their mark which otherwise means that they are using the mark at present. When the mark is not in use, simply obtaining registration by opponent will not support the claim of opponent that they are prior adopter & user of the mark and the claim of deceptive similarity as well as the rival marks will cause confusion and deception in the market and it cannot be considered also. Therefore, the issue is decided in favour of the applicant and the objection raised by the opponent is not appropriate in this case, which is ordered accordingly – on consideration of overall facts and 5/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 circumstances of the case. “
6. The Registrar of Trademarks has concluded, in the above extracted paragraph, that the appellant did not use its mark and merely obtained registration. The said conclusion is completely contrary to the evidence placed on record by the appellant in the form of the affidavit by way of evidence and the exhibits annexed thereto. It is also noticeable from the above extract that the applicant/1st respondent herein did not file any evidence in support of the application. The communication presently placed on record by the 1st respondent further indicates that the 1st respondent is ready and willing to file an application for cancellation of the registration.
7. In the above circumstances, the impugned order cannot be sustained and is, hereby, set aside. As a corollary, the Registrar of Trademarks is directed to take necessary steps to cancel the certificate of registration pertaining to Trade Mark No.917677 and take action to remove the entry relating thereto from the Register of Trade Marks. These actions shall be completed within a period of 6/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 four weeks from the date of receipt of a copy of this judgment.
8. (T)CMA(TM)/57/2023 is allowed on the above terms, without any order as to costs.
17.11.2023 Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No kj SENTHILKUMAR RAMAMOORTHY,J.
Kj 7/8 https://www.mhc.tn.gov.in/judis (T)CMA(TM)/57/2023 (T)CMA(TM)/57/2023 (OA/5/2016/TM/CHN) 17.11.2023 8/8 https://www.mhc.tn.gov.in/judis