S. Jagadeesan, J. (Chairman) - (1.) THE appeal is directed against the order of the Assistant Registrar of Trade Marks, Ahmedabad, dated 17.7.1996.
(2.) The second respondent M/s. Cadila Chemicals Pvt. Ltd. filed an application No.493062 in class 5 of the Fourth Schedule of the Rules framed under the Trade and Merchandise Marks Act, 1958, on 20.6.1988 for registration of the trade mark 'STEMIZ' word per se in respect of Pharmaceutical, Veterinary and sanitary substances, infants and invalid foods, plasters, material for bandaging, materials for stopping teeth, dental wax, disinfectants; preparations for killing weeds and destroying vermin claiming user of the mark as proposed to be used. The said mark was advertised in the Trade Marks Journal No.1089, dated 16.10.1994 at page 963. The appellants herein M/s. Ind Swift Ltd. filed their notice of opposition on 26.12.1994 stating that they are the registered proprietors in India of the trade mark consisting of word 'STEMIN' in respect of Pharmaceutical and Medicinal preparations. The impugned mark is phonetically as well as visually similar to that of the mark of the second respondent and the goods are also of same nature, the registration of the impugned mark would cause confusion and deception and as such, it will be violative of Section 11(a), 11(e) and 12(1) of the said Act. They further stated that the registration would be violative of Section 9 and 18 (1). After the formalities were over, the matter was heard by the Assistant Registrar of Trade Marks and under the impugned order, the Assistant Registrar rejected the opposition No. AMD 846 of the appellant and accepted the application No.493062 of the second respondent under Section 12(3) of the said Act except for sale in the districts of Hoshiarpur (Punjab State), Jaipur, Udaipur, Bharatpur, Bikaner, Baran and Karouli (Rajasthan State), Indore (Madhya Pradesh State) and Ghaziabad (Uttar Pradesh State) and the Union Territory of Chandigarh and Panchkula (Haryana State), by way of filing a request on Form TM 16. This restriction was imposed on the ground that the appellant has established the trade and selling their products in the above mentioned districts. Aggrieved by the same, the appellant preferred an appeal in Appeal No.12/1996 on the file of the High Court of Gujarat at Ahmedabad, which stood transferred to this Appellate Board in compliance of Section 100 of the Trade Marks Act, 1999.
(3.) AT the outset, the learned counsel for the appellant contended that both the marks are similar and identical and there is every likelihood of creating confusion and deception by the registration of the impugned mark. Apart from that she also contended that the first respondent's product is made of 'ASTEMIZOLE' and the Central Government, by notification GSR 732 (E), dated 29.10.2002 has prohibited the manufacture, sale and distribution of the drug 'ASTEMIZOLE' for human use with effect from 1.1.2003 and by virtue of the said notification, the second respondent's product STEMIZ has been removed from the list of updated prescribers hand book. Consequently, at present the second respondent is not manufacturing any product under the disputed trade mark. But, however, she contended that the Appellate Board may consider the claim of the appellant on merits with regard to the similarity of the mark and give a decision on merits so that the second respondent can be prevented from using the mark in respect of other products.;