Raghbir Singh, Vice-Chairman - (1.) THIS is an appeal filed in the Gujarat High Court as Appeal No. 5/1996 and the same has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/261/2004.
(2.) M/s. Cadila Laboratories Private Ltd., Ahmedabad, filed an application for registration of trade mark 'ASTLER' (word per se) as application No. 487853 in Class 5 in respect of Pharmaceutical and medicinal preparations in Part A of the Register on 23.03.1988. The mark was proposed to be used. M/s. Khandelwal Laboratories Ltd., Mumbai, Respondent No. 1, in the present appeal filed an opposition on 27.7.1992. They submitted that they are the subsequent proprietors of registered trade mark 'ASTA' under No. 162565 as of 28.1.1954. They submitted that the said registration has been renewed from lime to time till date. The impugned mark is deceptively similar to their mark. They challenged the impugned mark on the ground of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958. The appellants filed their counter statement on 13.1.1993, denying all the material grounds relied upon by the opponents. The opponents did not file any evidence and relied upon the facts stated in the notice of opposition only. The appellant filed their evidence by way of affidavit of their legal manager.
(3.) THE Assistant Registrar of Trade Marks heard the matter on 28.9.1995. THE learned counsel for the opponent opted to confine his submissions only to the objections taken under Sections 12(1) and 18 of the Act. THE finding of the Assistant Registrar in the matter was that with a view to make an examination of the mark under Section 12(1), one has to go by the definition of deceptive similarity as given under Section 2(1)(d) of the Act. This question is to examine as to whether the mark 'ASTLER' so nearly resembles the registered trade mark 'ASTA' as to be likely to deceive or cause confusion. Both the marks being the word marks, he deemed it fit to follow the rules of comparison laid down by Justice Parker in the case of Pianotist (1906) 23 RPC 774 at page 777. THE Assistant Registrar relied upon some more English cases and reached the conclusion that the marks are deceptively similar to each other. Similarly, he concluded that the goods covered under both the marks are similar and thus he reached the conclusion that the objection raised under Section 12(1) is to be sustained. THEn, he proceeded to examine the matter under Section 12(3) of the Act and observed that the honesty of adoption and user is the sine qua non for considering an application under Section 12(3) of the Act. But, in this case, the applicants have not come out with any explanation as to how and as to why they hit upon the mark 'ASTLER'. Surely, it is not coined from the generic name "Paracetam" in respect of which the mark is said to being in use. Thus, the applicant had not produced any evidence to show that the impugned mark was honestly adopted or bona fidely used by them even subsequent to the date of the application. He found no special circumstances in the case which could bring the applicant's case within the ambit of Section 12(3). In relation to the examination of the mark under Section 18(1), the Assistant Registrar, was of the view that since the adoption of the mark by the applicant was dishonest, so the objection of the opponent under Section 18(1) of the Act, is to be upheld. Having upheld the objections raised under Sections 12(1) and 18(1) of the Act, the Assistant Registrar reached the conclusion that no discretion is left with him and thus the impugned application is to be disallowed.;