Raghbir Singh, Vice-Chairman - (1.) APPEAL No. 5 of 1995 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of Trade Marks Act, 1999 and has been numbered as TA. No. 254/2004.
(2.) Appellant M/s Cadila Laboratories Ltd., Ahmedabad filed an application for registration of trade mark 'CYCLOVIR' in Part A of the Register of Trade Marks vide Application No. 483818 on 5.1.88 in respect of pharmaceutical and medicinal preparations included in class 5. The applicant claimed user of the mark applied for as proposed to be used. In due course of time the application was advertised in the Trade Mark Journal No. 1026 dated 1.3.92 at page 1479. M/s Burroughs Wellcome India Limited, Bombay the first respondent herein filed an opposition to oppose the registration of the mark applied for on the ground of its violation of Sections 9, 13 and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). Respondent submitted that 'CYCLOVIR' is confusingly similar to the word 'ACYCLOVIR' which is an international non-proprietory name in respect of a particular pharmaceutical substance. Respondent further submitted that the word 'CYCLOVIR' is phonetically and visually as good as 'ACYCLOVIR' on which there cannot be any monopoly right of a single proprietor. Hence the mark applied for is not registrable being totally a non-distinctive trade mark. Respondent further submitted that the mark applied for is close to the chemical name of a drug and its registration is itself prohibited under Section 13 of the Act. Respondent also submitted that the applicants cannot claim to be proprietor of the mark applied for and it is similar to a generic name. Hence it violates the provisions of Section 18(1) of the Act. Appellant contradicted all the submissions made by the respondent. Appellant further contended that it is the general practice in the pharmaceutical trade that the trade marks are derived from the generic names. Learned Assistant Registrar heard the parties and held that the impugned mark does not meet the requirements of Section 9 of the Act, 1958. It is not distinctive of the goods, that is, not adapted to distinguish the goods of its proprietor from that of the goods of the other proprietors during the course of the trade. The word 'ACYCLOVIR' is a non-proprietory name for the pharmaceutical substance which as per its chemical nomenclature is 9-(-2-hydroxyethoxymethye) guanine having its chemical emperial formula C8H11N5O3, as per the list of international non-proprietary names for pharmaceutical substances published by the World Health Organisation. Assistant Registrar put his reliance upon certain judgements including one from the Federal Supreme Court of Germany (1980 IPLR 64) and a few more from RPC and the Indian Journals and held that the mark is violative of provisions of Section 9 of the Act being phonetically as well as visually equivalent of the word 'ACYCLOVIR' which is a generic name of a pharmaceutical substance. The learned Assistant Registrar held that the registration also does not qualify for the benefit of Section 18(1) of the Act. Since the mark is not a distinctive trade mark, there cannot be any ground justifying the claim in favour of the applicant to be the proprietor of the mark applied for. Thus, under Section 18(1) of the Act he held against the appellant. Section 13(1) of the Act prohibits registration of a trade mark which is the name of a chemical compound or chemical element. Assistant Registrar held that since 'CYCLOVIR' in itself is not the name of a chemical, the mark applied for is not violative of the provision of Section 13 of the Act. In conclusion, he ordered for refusal of the registration.
(3.) THE appeal came up for hearing on 28.7.2004 before the Board at Ahmedabad. Learned counsel Shri R.R. Shah appeared for the appellant and learned counsel Shri Girish N. Shah appeared for the respondent.;