T.R. Subramanian, Technical Member - (1.) THIS is an appeal against the order of the Assistant Registrar of Trade Marks, Chennai dated 15th October 1999 dismissing the Opposition No. MAS 3400 filed by the appellants opposing the registration of the respondent's Application No. 470136 in Class 5.
(2.) The respondents hereinabove had filed Trade Mark Application No. 470136 on 1st April 1987 at the Trade Marks Registry, Chennai for registering their trade mark 'LYMOXYL' in respect of pharmaceutical and medicinal preparations in Class 5. The respondents have stated that they have been using the mark since January 1984. The application was ordered to advertise with the amendments of the goods to read as "Medicinal preparations being Schedule 'H' drug to be sold by retailers on the written prescription of registered medical practitioners only". The application was advertised in the Trade Marks Journal on 1st September 1995. On 27th October 1995, the appellants hereinabove filed a notice of opposition opposing the registration of the respondents mark under Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 mainly claiming that the impugned mark 'LYMOXYL' is deceptively similar to their registered trade mark 'AMOXIL' registered under No. 279428 dated 10.4.72 in Class 5 in respect of pharmaceutical preparation and substances for human use and for veterinary use and hence the same is prohibited from registration.
(3.) THE respondents filed their counter statement denying all the allegations and contentions stated in the notice of opposition and contended that the suffix 'MOXIL' or 'MOXIN' is common to a number of marks registered in respect of 'AMOXYCILLIN' preparations in the name of different manufacturers and that 'AMOXIL' is an abbreviation form of 'AMOXICILLIN' and being a generic term the opponents cannot claim its exclusive rights. THEy also claimed that they had adopted the trade mark since January 1984 and they are eligible for registration under Section 12(3) of the Act. THE appellants filed their evidence which was followed by the evidence filed by the respondents. Appellants thereafter filed their reply evidence. THE case was heard by the Deputy Registrar of Trade Marks on 19th July 1999 and 9th September 1999 and by his order dated 15th October 1999 had dismissed the opposition. He had directed that the specification of goods should read as 'Pharmaceutical preparation being Schedule 'H' drug to be sold by retail on written prescription of registered medical practitioners only' to make it in conformity with the label originally filed for registration. He has held that the rival marks are not similar even if the rival goods are goods of the same description. He has also held that the respondents are eligible for registration under Section 12(3) of the Act keeping in view of the fact that it is a case of honest concurrent use of the mark by the respondents as they have been using it from 1984 whereas the appellants has been using their mark only from August 1990.;