V.RAVI,HON'BLE TECHNICAL MEMBER - (1.) THE appellant herein pray for the setting aside of the order of refusal of the trade mark CANDIA under application No.826084 by the Deputy Registrar of Trade Marks, Kolkata, dated 27th June, 2007 in Opposition Cal -213063.
(2.) THE facts of the case briefly is as follows: v The appellant is a reputed French company engaged in the business of manufacture and sale of milk and milk products including butter, cream, infant milk powder for babies etc. The impugned application was filed by the appellant's predecessor Candia S.A. in 1998. Later in 2005 the proprietorship of the mark was transferred to Celdilac S.A. (formerly known as Compagnie Europenne de Diffusion de produits lactes). The appellant started their business operation under the mark Candia in France from 1971 by regrouping the regional milk cooperatives in France. The expression Candia is a original, fanciful and a coined term and inherently distinctive and identified with the goods of the appellants. It is in use in more than 50 countries including India. It is an internationally well known trade mark for milk and dairy products. In 2005 alone the world wide annual sale of milk products under the trade mark CANDIA was over 600 million litres. v In India the appellants started sale of ice creams under the trade mark CANDIA from about 2005 in association with M/s CREAM BELL their Indian business associate with whom it entered into a franchising agreement including licensing of the trade mark Candia. v The appellant are the registered proprietor in India of the trade mark CANDIA in Class 29, 30, 32 and 43. v An application has also been made to the Registrar of Trade Marks for the recordal of change of ownership of trade mark CANDIA from Candia S.A. to Cedilac S.A awaiting action. v The impugned application is for the registration of Candia in respect of "Dietetic substances, food for babies all being goods included in Class 5". This was opposed by the respondent herein who are the owners of the trade mark CANDID in respect of "pharmaceuticals and medicinal preparations and substances in Class 5". The appellants submit that the opposition is highly untenable, frivolous and a fictitious proceeding as there is no real conflict between the competing marks and the goods which are totally different and poles apart. The word Candid is a common English word and apparently derived from the term Candida which is a medical term for fungal infection which occurs in exposed and moist parts of the body such as the oral cavity, the vagina and/or vulva (vaginal candidiasis or thrush), folds of skin in the diaper area (diaper rash), the ear, etc. The mark Candid is used in the form of ointments, lotion, gel, cream and powder. On the other hand, the impugned mark which is already protected in Class 29 was applied for registration in Class 5 for "Infant milk food for babies" as the appellant also produce a range of such products and it is for that reason alone that they applied for the registration of the impugned mark in Class 5. The competing goods and mark are so different that it is totally inconceivable and absurd to hold that they are likely to cause confusion. The trade channel and end users are totally different. v The rival marks CANDID and CANDIA are phonetically very different. The terminal letter A' in the applicants' mark CANDIA is emphatic and cannot be slurred in pronunciation. The mouth has to open to pronounce the lastsyllable of the mark CANDIA'. The respondents are trying to assert a excessive monopolistic right over the expression CANDI' which in fact is a commonly used prefix in respect of pharmaceuticaland medicinal preparations. There are a number ofregistered trademarksin India in Class 05 having the prefix CANDI in the name of different proprietors other than the respondent herein some of which are listed below: Mark Class Reg.No Date of registration Goods Proprietor CANDILIN 05 1170031 28/01/2003 Medicinal and preparations Laenor Pharmaceuticals, Amristar CANDIBAN 05 828050 18/11/1998 Pharmaceutical preparations Meyer Organics Pvt. Ltd. Thane CANDIVATE 05 1221352 08/08/2003 Pharmaceuticals and Medicinal preparations Cosme Pharma Ltd., Goa CANDIOMYCIN 05 155962 21/10/1952 Pharmaceutical preparations Farbenfabriken Bayer, Germany CANDINOX 05 1151528 18/11/2002 Medicinal, Pharmaceutical preparations included in Class 5 M.J.Bio Pharm Pvt. CANDICIDE 05 414906 22/12/1983 Medicinal, Pharmaceutical and Veterinary preparations SG Pharmaceuticals, Baroda It is submitted that when the afore -mentioned CANDI -prefixed trademarks in respect of goods identical to those of the respondent can co -exist on the trademark register, the opposition filed against the appellant's mark in respect of totally different and unrelated goods is wholly untenable, vexatious and frivilous. v Despite stark differences between the marks and goods, the appellant in keeping with its global policy in maintaining commercial peace and harmony through fair competition were even willing to restrict its goods in the impugned application by deleting "dietetic substances" and restricting the use of the mark to "Food for babies" alone. This settlement proposal was declined by the respondent. v Subsequently, the respondent herein mischieviously filed an identical trade mark CANDIA under no 1232049 in Class 5 on 4th September, 2003. This was apparently done with the malafide intention of mis -appropriating the appellant's trade mark CANDIA. The said application was duly opposed by the appellant herein and is pending adjudication. However, the bad faith of the respondent may be taken due note of in adopting an identical well known trade mark CANDIA. The Deputy Registrar's order dated 27th June 2007 refusing the impugned mark is wholly erroneous and contrary to settled principles of law and facts and circumstances as detailed below: i) Deputy Registrar had erred in holding that the impugned mark would lead to confusion in the mind of public which would lead to confusion in the goods. ii) The Deputy Registrar has failed to appreciate the visual and phonetic difference in the competing marks and goods. He has twisted the interpretation of the trade mark dictum concerning confusion amongst "Man of average intelligence and imperfect recollection" by stretching it to infinite limits. iii) The Deputy Registrar has further seriously erred in relying on the decision of this Board in Ind Swift Ltd. Vs Registrar of Trademarks reported in 2005(30) PTC 646 concerning the registrability ofthe mark STEMIZ for pharmaceutical goods in Class 5. In that case, the applicant was using the mark STEMIZ for "ASTEMIZOLE" whereas the opponent's registered trade mark STEMIN was also for medicinal product. In the case on hand, the goods, users, trade channel and consumers are polls apart. iv) The Dy. Registrar has seriously erred in relying on the reported decision (1944) -61 RPC -31 -V "Aktiebolaget Jonkoping Vulcan vs V.S.V. Palanichamy Nadar And Ors."where it was held that milk products for foods meant for infants and invalid are of the same description as medicated vitamin preparation' in tablet form for human use. The comparison is totally irrelevant to this case. v) The respondent of their own showing are the proprietors of various composite words containing other letters, words, etc. like CANDIDV', KETO -CANDID' CANDIBIOTIC', CANDID -B', CANDID V1', CANDIDERMA', CANDITRAL' and this is even more reason why the rival marks are unlikely to cause confusion. The terminal letter A' of the appellants mark CANDIA cannot be slurred in pronounciation and the prefix Candi of the respondent are common to trade in the pharma trade. vi) The Deputy Registrar further gravely erred in relying on the decision of the Hon'ble Supreme Court in Corn Products Refining Co vs Shangrila Food products AIR 1960 -SC -142 where registration of GLUVITA for biscuit falling in Class 30 was refused based on the registered mark Glucovita in Class 5 and 30 for Glucose. The decision was based on the admission by the applicant that Glucose was used in the manufacture of biscuit. There is no such trade connection in respect of the impugned mark with the respondent's trade mark. vii) Similarly, the Deputy Registrar again gravely erred relying on the decision reported in 1974 -RPC 583 "British Sugar Plc vs James Robertson and Sons Ltd."where the mark Floradix for Diatetic Herbal Elixirs' was refused registration on the ground that it conflicted with Fluorodix' and Flurodix' for medicinal preparation for treatment of teeth and gum diseases. In that case, the deciding factor was the closeness and proximity of the rival marks. Besides, the impugned mark CANDIA was adopted long before the respondents registered trade mark CANDID. viii) The Deputy Registrar further erred in holding that the competing goods are sold in all medicinal and pharmaceutical stores. He failed to appreciate that the appellant's goods - foods for babies are generally sold in food stores and super market and never share the same shelf space as the respondent's goods. ix) The Deputy Registrar despite sustaining the proprietary claim of the appellant of the impugned mark CANDIA seriously erred in holding that the registrability of the trade mark had to satisfy the other mandatory provisions of the Act. His conclusion that the impugned mark is only proposed to be used', and no harm or prejudice would be caused by its refusal is bad in law and on facts. The impugned mark is already widely used in respect of ice creams and appellants are expanding their business for milk food products for babies. x) The Deputy Registrar had also erred in consciously refraining from commenting on the respondents bad faith' in seeking registration of the impugned mark while unnecessarily casting aspersions on the conduct of the appellant in withdrawing their another application for CANDIA under No. 826081 which was also filed on the same date as the impugned mark on 5th November, 1998. xi) In view of the foregoing the appellants pray that the order and decisions of the Deputy Registrar be set aside and quashed and the impugned mark be directed to proceed to registration.
(3.) THE case of the respondents is as under: i) The appellants have filed the present appeal along with incomplete proceedings that were part of the record before the Deputy Registrar of Trade Marks. They have not produced the entire evidence of the respondents and have merely filed the affidavit under rule 50 without exhibits. By this action, the appellants have deliberately suppressed vital evidences of the respondents with a view to mislead the Board. They have thus approached the Board with an unlcean hand and the impugned appeal ought to be rejected at the threshold. ii) The decision and order of the Dy Registrar are reasoned and the findings are neither arbitrary nor capricious and there is no cause to disturb the ruling. The present appeal is beyond the scope of documents that were available with the respondent at the time of deciding the opposition. New grounds are now sought to be added which were not pressed at the time of hearing. iii) The respondents is counted amongst the front runners in the Indian pharmaceutical industry and have nation wide distribution network through various dealers and stockist. The respondent has leadership status in niche segments like dermatology, diabetics and internal medicines and their business spans over 91 countries across the globe. iv) In 1978 the respondents honestly and bonafidely adopted the trade mark CANDID to distinguish its goods and by and by introduced a series of CANDID family formulation at regular intervals such as CANDID cream, Candid lotion, Candid powder, Candid Vaginal tablets and Gel, CANDID drops for ear bearing the mark CANDID either as a prefix or as a suffix. Because of the high quality and reliability of the goods CANDID has become a household name in India and abroad. The impugned mark is identical or deceptively similar to the trademark CANDID of the respondent. The appellants are wrong in seeking registration of the impugned mark for goods falling in Class 5. Further, the CANDID of the respondent is used for treatment of superficial fungal infection. v) It is true that the mark CANDID is a dictionary word but the respondent submit that it has acquired a secondary meaning and is factually distinctive of their goods. Moreover, the addition of a single letter between the rival mark is hardly significant to distinguish one from the other. The Dy Registrar has come to the right conclusion that the competing marks are deceptively similar and no other view is possible in the facts and circumstances of the case. The appellants are trying to harm and mitigate the prior rights of the respondents and the registration of the impugned mark would cause great injury diluting the fame of the respondents trade mark. Gist OF REPLY AFFIDAVIT UNDER RULE 11 OF (IPAB) (PROCEDURE) RULES BY THE APPELLANT: The allegation that the entire records of the lower court has not been produced has nothing to do with the appellant. It is highly inappropriate to allege that the appellant have come to the Board with an unclean hand. This appeal is maintainable both in law and fact and the impugned order of the Deputy Registrar suffers from serious infirmities due to non -appreciation of basic facts. It is also denied that the appellant and the respondents are in the same trade channel. The findings of the Deputy Registrar are completely misconceived and the use of the trade mark CANDIA in respect of milk food for babies will never cause any confusion or deception. The Deputy Registrar had failed to appreciate that the International Classification of Goods is merely an administrative tool and that the Class number should not be the determining factor whether two types of goods are the same or similar. The respondents are hurling baseless allegation against the appellant. The Deputy Registrar has himself upheld the claim of proprietorship of the appellant for the impugned trade mark CANDIA. Despite this the findings of the Deputy Registrar in refusing the impugned mark are erroneous, contrary to settled principles of law and liable to be set aside. ;