K.N.BASHA,CHAIRMAN - (1.) THE applicant has come forward with this application for the relief of removal of the trade mark and rectification of the register under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (Hereinafter referred to as the Act') in respect of the registration No.1309918 in Class 5 of the trade mark (DROTKIND -M) by expunging the entry from the register.
(2.) BOTH the applicant as well as the first respondent are engaged in the manufacture of the medicinal preparations and its sale.
(3.) THE applicant, a private limited company is engaged and dealing with the manufacture and sale of medicinal and pharmaceutical preparations. The case of the applicant is that they coined and bona fidely adopted the trade mark DROTIN in respect of the medicinal preparations in February, 1997 and obtained registration on 3.2.1997 under No.732349 in Class 5. The drug licence was obtained for the manufacture of medicinal preparations under the trade mark "DROTIN" as per the drug licence dated 2.4.1997 issued by the State Drug Controller for the manufacture and sale of medicinal preparations in respect of the coated tablets containing Naptha (Dhydro Eithereine Chloride) as an active ingredient. The applicant has used the trade mark "DROTIN" continuously, extensively and exclusively right from April, 1997 and acquired immense reputation and goodwill. The trade mark "DROTIN" has acquired distinctiveness. The applicant sought for cancellation and expunging the impugned trade mark of the first respondent by raising the following grounds: (a) The adoption and use of the trade mark DROTIKIND -M and DROTIKIND -80 by the respondent in relation to pharmaceutical preparations which are identical and/or deceptively similar to the trade mark DROTIN is dishonest, mala fide, tainted and in bad faith. The use of said mark amounts to violation of the common law as well as statutory rights of exclusive use of the applicant and constitutes infringement of trade mark registration No.732349 of the applicant under Section 29 (1) of The Trade Marks Act, 1999. The use of the impugned marks DROTIKIND -M and DROTIKIND -80 by the respondent No.1 in relation to medicinal preparations is likely to lead to confusion and/or deception amongst the members of the public, doctors, chemists and the members of the trade on account of their deceptive similarity with the trade mark DROTIN of the applicant. The use of the impugned marks DROTIKIND -M and DROTIKIND -80 with or without any suffix by the respondent in relation to their medicinal and pharmaceutical preparations is likely to induce the members of the public, pharmacists and doctors to believe that the formulations of the respondent originate from the applicant which is a misrepresentation leading to passing off of the respondents' goods and/or business as and for those of the applicant. The whole of applicant's mark is adopted and used as a prefix by the respondent in the impugned marks. (b) The respondent No.1 had known about the prior adoption, use and registration of the trade mark "DROTIN" in favour of the applicant since 1997 and in any event at least since 2005. The suit for perpetual injunction to restrain infringement and passing off was filed by the applicant against Respondent No.1 in the Year, 2005. In the suit filed by the Respondent No.1 in October, 2005, reference and reliance on the registered trade mark "DROTIN" under No.732349 in Class 5 was also made by the applicant. Having known these facts, the Respondent No.1 obtained registration of impugned mark in bad faith. (c) The application for Registration of "DROTIKIND" of respondent No.1 apparently was advertised in the Trade Marks Journal in contravention of the provisions of the Trade Marks Act, 1999 and the Rules framed thereunder. The registration and use of the mark "DROTIN" of the applicant was over seven years old when the impugned application was made by the respondent to register "DROTIKIND". The registration of the impugned mark was obtained and made violative of provisions of Section 11 of the Act. The registration of the impugned mark was obtained by suppression of material facts. Therefore, it is an entry wrongly made and made without sufficient cause and continues to exist without sufficient reasons on the register. (d) The Application No.1309918 was ordered to be Advertised Before Acceptance under the provisions of Section 20 (1) proviso. The advertisement of the mark before acceptance itself show that the Registrar considered the impugned mark to be prohibited from registration in view of section (1) and (2) of Section 11. From the date of the application till the date of the order passed under Section (1) proviso and the date on which the registration was made, there was no change of circumstances or sufficient material to overcome the absolute bar created to the registrability of the impugned mark or the bar created under Section 11 of the Act. The entry relating to the registration of the impugned mark was thus wrongly made and is wrongly remaining on the register. (e) The entry relating to registration of the impugned mark was also wrongly made in contravention of the provisions of Section 23 of the Act. (f) The entry made in December, 2005 of the above mentioned trade mark in the Register has been made without sufficient cause and is an entry wrongly remaining on the Register. (g) The impugned registration was obtained and made contrary to the provisions of Sections 11, 11 (a), 11 (1) (b), 11 (2) (a), 11 (3) (a) of the Trade Marks Act, 1999 ("The Act"), and it continues to violate the said provisions at the date of the present application, on account of prior acknowledged adoption, use and registration of a near identical mark "DROTIN" by the applicant. (h) The respondent No.1 is not the proprietor of the impugned mark "DROTIKIND". False claims to the proprietorship of the said mark were made by the respondent while seeking registration thereof and/or filing of the mark application for registration on 20.9.2004. As per Respondent No.1's own admission, the goods under the impugned mark were not manufactured by it but manufactured by Windias Biotech Limited. The Respondent No.1 could not make a claim to the proprietorship of the mark under the provisions of law, as applicable. (i) The applicant are persons aggrieved' by the impugned registration under Section 57 of the Act, as the applicant are prior adopters and proprietors of the trade mark "DROTIN" under registration No.732349 in class 5 dated 3rd February, 1997 and prior users since 1997." The first respondent has filed their counter statement denying the averments, contentions and allegations made by the applicant. It is stated in the counter statement that the trade mark "DROTIKIND" was adopted and in continuous and exclusive use from the year 2004. The respondent has got statutory right to the exclusive use of the said trade mark by virtue of its registration thereof. It is stated that the respondent trade mark "DROTIKIND" is distinctive and has been continuously and extensively used since the year 2004 and acquired immense goodwill and reputation. There is no chance of any confusion or deception among members of the trade or public. The medicinal preparations under the trade mark "DROTIKIND" is being manufactured by M/s. Windias Biotech Limited under a valid drug licence and the products under the mark "DROTIKIND" marketed by the respondent. The respondent's trade mark "DROTIKIND" is structurally, visually and phonetically dissimilar to the applicant's trade mark "DROTIN". The first respondent's trade mark was published in the Trade Marks Journal dated 30.3.2005 and the same has been registered unopposed and despite opportunity, the applicant did not oppose the same. It is further stated that the applicant has obtained drug licence for manufacture and sale of medicinal preparations under the trade mark "DROTIN" in respect of coated tablets containing Naptha (ISI) as an active ingredient. The said contention has been averred with mala fide intention in order to mislead/prejudice this Hon'ble Board that the applicant has not adopted the mark "DROTIN" from common ingredient DROTAVERINE HYDROCHLORIDE whereas Dhydro Eithereine Chloride is commonly known as DROTAVERINE HYDROCHLORIDE and from the same ingredient the applicant has adopted the mark "DROTIN" i.e. from the word DROTAVERINE. That the respondent's trade mark "DROTIKIND" is registered with effect from 20.09.2004 and even registration certificate in this regard has been issued by the Ld. Registrar of Trade Marks (respondent No.2) on 15.12.2005 and admittedly during such period litigation between the parties was pending but the instant application has been filed on 07.07.2008 i.e. after more than 3 years 9 months from effective date of registration and even after more than 2 and years from the date of issuance of registration certificate. Thus the instant application is liable to be dismissed on this ground alone as it is filed after long delay and laches. ;