S. Jagadeesan, Chairman - (1.) THE appeal is arising out of the order of the second respondent dated 30.4.1993, allowing the notice of opposition filed by the first respondent and consequently rejecting the registration of the appellant's application in respect of their trade mark "BRUFORTE" in respect of Pharmaceutical and Medicinal preparations in class 5.
(2.) The appellant herein filed an application bearing No. 458933 on 22.8.1986 for registration of a trade mark "BRUFORTE" in respect of Pharmaceutical and Medicinal preparations in class 5. The said application was accepted by the second respondent herein and advertised in the Trade Mark Journal No. 953, dated 16.2.1989. The first respondent herein filed their notice of opposition on 7.6.1989, objecting to the registration of the appellant's trade mark on the ground that the first respondent is carrying on an established business as manufacturers and merchants of Medicinal and Pharmaceutical products and that they have registered their mark "BRUFEN" under No. 250671 in respect of Pharmaceutical preparations for the treatment of Rheumatoid, Arthritis, etc. and that the said mark was extensively used in India and thereby valuable reputation and goodwill have accrued to the said trade mark. The further objection of the first respondent is that the appellant's mark is deceptively similar to that of the first respondent's mark and the use of the mark by the appellant would cause confusion and deception in the minds of the medical practitioners, Chemists and public. Yet another objection taken by the first respondent is that the appellant has claimed the use of the said trade mark for a period of three months only and as such, the refusal of the registration will not prejudice the appellant in any manner. In all, the opposition of the first respondent is that the registration of the appellant's trade mark would be contrary to the provisions of Sections 11 (a), 11(e), 12(e) and 18(1) of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act). The appellant filed the counter statement denying all the material averments made in the notice of opposition and they further contended that their trade mark is distinct and distinguishable from the first respondent's mark BRUFEN. It is further stated that several manufacturers are marketing similar preparations bearing the marks having the prefix "BRU" viz., Brufamol, Brupal and Brustan, etc. In such circumstances, the first respondent cannot claim monopoly in respect of the prefix "BRU" per-se. The trade mark "BRUFORTE" is totally distinct and different from "BRUFEN". Since the appellant is the proprietor of the trade mark "BRUFORTE", none of the provisions of the said Act prohibited the registration of their trade mark.
(3.) THE Registrar of Trade Marks, after considering the stand taken by both the parties as well as the arguments advanced by their respective counsel, under the impugned order came to the conclusion that the objection raised by the first respondent under Sections 11 (a) as well as 11(e) of the said Act cannot be sustained. However, the Registrar of Trade Marks upheld the objection of the first respondent under Section 12(1) of the said Act and found that both the trade marks are identical and as such, allowing the use of the trade mark of the appellant would definitely cause confusion and deception among the Doctors as well as the public. THE Registrar of Trade Marks further held that the appellants are not entitled for protection under Section 12(3) of the said Act since the Appellant's trade mark was in use only 2-3 months prior to the date of application. THE Registrar further upheld the objection of the first respondent under Section 18(1) of the said Act and consequently, refused registration of the appellant's Trade Mark "BRUFORTE" and rejected their application No. 458933 in class 5.;