S. Jagadeesan, Chairman - (1.) THIS appeal arises out of the order of the Assistant Registrar of Trade Marks, dated 01.02.1995, rejecting the application of the appellant for registration of their trade mark 'SOLVAY'.
(2.) The appellant herein filed an application No. 462584 B, with the second respondent herein for registration of the label mark consisting of the word 'SOLVAY' in Class 5 for the goods (veterinary substances). The said application was filed by the appellant on 03.11.1986. The mark was proposed to be used as on the date of application. The second respondent accepted the application in Part B of the Register and advertised the same in the Trade Marks Journal No. 1011, dated 16.07.1991 at page 504. The first respondent herein filed their opposition on 18.11.1991, objecting to the registration of the impugned mark on the ground that they are using the trade mark "SOLVIN" in respect of medicinal preparations for several years and thus, their trade mark enjoys excellent reputation and goodwill in the market on account of extensive use and publicity and that their trade mark "SOLVIN" has become distinctive and is exclusively identified and associated with the first respondent vis-a-vis their goods. The appellant deceptively wants to adopt the trade mark "SOLVAY", the use of which would create confusion in the trade. The registration of the impugned mark would contravene Sections 9, 11(a), 11(e) and 18(1)of the Trade and Merchandise Marks Act, 1958. The appellant filed their counter refuting the averments made by the first respondent and further stated that the word "SOLVAY" is adopted after the famous "Solvay process" in the name of famous Chemist Ernst Solvay, the founder of the appellant company. The appellant further stated that the impugned mark was registered in many countries of the world and India in other classes. After completion of the process, the respective counsel were heard. Thereafter, the Assistant Registrar of Trade Marks, by the impugned order, allowed the opposition filed by the first respondent in DEL-7463 and rejected the application No. 462584/5 of the appellant for registration of the word mark "SOLVAY". Aggrieved by the same, the appellant preferred an appeal in the High Court of Delhi, at New Delhi, in CM(M) 261/1995, which was transferred to this Board in view of Section 100 of the Trade Marks Act, 1999, and the same was numbered as TA/113/2003/TM/DEL.
(3.) SHRI Sanjay Jain, the learned counsel for the appellant, contended that the Assistant Registrar of Trade Marks, had rejected the application of the- appellant for registration of the word label mark "SOLVAY", mainly on the ground that the impugned mark "SOLVAY" and the first respondent's trade mark "SOLVIN" are phonetically similar and as such, there may he some confusion in the trade. The contention of the learned counsel for the appellant is that the Assistant Registrar had committed an error in coming to such a conclusion. Both the marks cannot he said to be phonetically similar. The pre-fix word "SOL" may be the same, but, the suffix word "VAY" in the appellant's mark and "VIN" in the first respondent's mark would make the difference as the pronunciation is totally different. He also relied upon the judgments of the Delhi High Court in the case of Sami Khatib and Anr. v. Seagull Labs (I) Pvt. Ltd. and Anr., 2002 (24) PTC 165 (Del) and the case of SBL Ltd. v. Himalaya Drug Co., 1997 PTC (17) (DB). He also contended that the appellant's goods are related to veterinary products, whereas, the first respondents, medicinal preparations are for human consumption and as such, there cannot be any contusion.;