Kaghbir Singh, Vice-Chairman - (1.) THIS application for rectification of the register was filed by the petitioner in the High Court of Judicature at Madras under Section 56 read with Sections 107 and 108 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) as O.P. No. 686/2000. The same has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999.
(2.) The petitioner is a company registered under the laws of UK engaged in the manufacture of pharmaceuticals. The respondent is a company incorporated under the Companies Act, 1956. It is holding registration of the trade mark ZIFOL-12 under No. 536744 dated 11.9.90. The petitioner is holding the trade mark for FEFOL registered under No. 261202 in class 5 in Part A as from 10.12.69. The petitioner alleges that it had filed a suit in the High Court of Judicature at Madras as CS No. 1581/91 under the Trade and Merchandise Marks Act, 1958 alleging that the use of that trade mark is resulting in the infringement of petitioner's registered trade mark FEFOL. This suit was filed even before the respondent's mark ZIFOL-12 was registered and advertised in the Trade Mark Journal on 1.10.94. Respondent had earlier resisted by O.S. No. 1622 of 91 filed in the City Civil Court, Calcutta the Cease and Desist notice issued by the petitioner with respect to the respondent's use of the trade mark ZIFOL-12 as amounting to groundless threat of legal proceedings. When the CS No. 1581/91 was about to be taken up for trial, counsel for the respondent informed the Court that the trade mark ZIFOL-12 had been accorded registration in favour of the respondent herein and the suit for infringement is liable to be dismissed under Section 30(1) (d) of the Act. The petitioner conducted an investigation and came to know that the respondent had applied for registration of ZIFOL-12 in class 5 for pharmaceuticals on 11.9.90 and the same had been published in the Trade Mark Journal No. 1088 dated 1.10.94. It escaped the petitioner's attention due to inadvertence and in the absence of any opposition, the impugned trade mark proceeded for registration. Respondent's trade mark ZIFOL-12 for pharmaceuticals is deceptively similar to petitioner's trade mark FEFOL dated 10.12.69. Respondent's claim of prior use of registration is false. Respondent being in the same line of business knew about the existence of petitioner's trade mark FEFOL and its reputation. Thus, the adoption and use of the trade mark ZIFOL-12 is only with the object of exploiting the commercial goodwill attached to the petitioner's trade mark FEFOL. On these grounds the petitioner has requested for the rectification of the register by canceling the registered trade mark ZIFOL-12 under No. 536744 standing in the name of the respondent. In the counter statement filed by the respondent, the respondent has denied the averments and allegations contained in the petition filed for rectification of the respondent's registered trade mark. The respondent has submitted that its registered trade mark is neither phonetically nor visually similar to the trade mark of the petitioner. The respondent explained that in the year 1990 it achieved technical breakthrough after years of research and perfected the pellet in pellet technology. It has produced a preparation consisting of zinc ferrous sulphate, folic acid and vitamin B-12. Thus, taking the letters Z, I and FOL from the words zinc, iron and folic acids respectively and the numeral 12 from vitamin B-12 a unique mark ZIFOL-12 has been evolved. It has been honestly conceived and it is according to the standard branding practices of coining a new word. Thus, the coined word ZIFOL-12 was deemed distinctive by the Registrar's office to make its registration. The petitioner also made unsuccessful attempts by filing C.S. No. 1581 of 1991 alleging infringement of the petitioner's mark FEFOL. The respondent submitted that the trade mark ZIFOL-12 was registered after publication in the Trade Mark Journal as admitted by the petitioner itself. The petitioner did not exercise its option of filing an opposition thereto. The composition of two preparations are different. There are numerous other marks ending with 'FOL' like ROKFOL, TYFOL etc. Thus, there cannot be any monopoly for the suffix 'FOX'. The learned counsel for the respondent expressed his resentment for the deliberate attempt of the petitioner to spell the respondent's mark as 'ZEFOL' or 'ZEFOL-12' in the petition filed by the petitioner.
(3.) THE matter was taken up for arguments on 21.07.04 and learned counsel Ms. Gladys Daniel appeared for the applicant and learned counsel Mr. N.S. Sivam appeared for the respondent.;