BARODA PHARMA PVT LTD Vs. ZENECA LIMITED U K BASED COMPANY AND THE ASSISTANT REGISTRAR OF TRADE MARKS
INTELLECTUAL PROPERTY APPELLATE BOARD
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S. Usha, Member (T) -
(1.) APPEAL No. 1 of 2000 filed before the High Court of Gujarat, Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/278/2004/TM/AMD.
(2.) The appellant filed an application for registration of the trade mark TENOREX' in respect of pharmaceutical and medicinal preparations under application No. 531033 on 13.4.1990 as proposed user. The said application was accepted under Section 20 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) and advertised in the Trade Marks Journal No. 1094 dated 1.1.95 at page 1378. The first respondent took out the notice of opposition to the registration of the application. The appellant had filed their counter statement. After completion of the formal procedures the matter was set down for hearing before the Assistant Registrar.
Learned Assistant Registrar heard the matter and decided the issues under Sections 9, 11 (a), 11(e), 12(1) and 18(1) of the said Act. Learned Assistant Registrar rejected the first respondent's contention that the trade mark 'TENOREX' has no direct reference to the character and quality of goods under Section 9 of the said Act. Learned Assistant Registrar also found that Section 11(a) and 11(e) of the Act can be applied as the first respondent's mark had been substantially in use and the first respondent's mark was registered in India and that there was every possibility of confusion being caused if the appellant's mark was registered. Learned Assistant Registrar also held that as the marks are deceptively and phonetically similar and that there was substantial chance of a conflict between the rival marks and the first respondent's objection under Section 12(1) of the said Act sustains. Learned Assistant Registrar finally held that as the appellant had been using a different mark earlier and had now changed to 'TENOREX' and as such the adoption was dishonest and upheld the objection under Section 18(1) of the said Act. In view of the above the learned Assistant Registrar had allowed opposition No. AMD 900 and had refused registration of application No. 531033. Aggrieved by the said order the appellant preferred the above appeal.
(3.) THE appeal was taken up for hearing in the Circuit Bench at Ahmedabad on 25.7.2006. Learned Counsel Dr. R.H. Acharya appeared for the appellant and learned Counsel Shri Rakesh Gupta and Shri Abhishek Mehta appeared for the first respondent.;
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