Raghbir Singh, Vice Chairman - (1.) APPEAL No.4/1999 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/277/2004/TM/AMD.
(2.) The first respondent filed an application on 9.3.1998 for registration of a trade mark "KIDRAL" word per se in class 5 in respect of Medicinal and Pharmaceutical preparations. The application was ordered by the Registrar to be advertised before acceptance in the Trade Marks Journal. Accordingly, the mark was advertised in the Trade Marks Journal No.1107 dated 16.7.1995 at page 1253 as proposed to be used. The appellant gave a notice of its intention to oppose the registration on 14.11.1995 on the ground that it is the registered proprietors of trade mark "TEDRAL" under No.130520 in class 5 in respect of Pharmaceutical products. The impugned mark "KIDRAL" in class 5 in respect of Pharmaceutical and Medicinal preparations is deceptively similar to its registered trade mark "TEDRAL". The appellant's mark "TEDRAL" has acquired international reputation including in India in respect of Pharmaceutical and Medicinal products. Thus, the impugned mark is violative of the provisions of Sections 11(a) and 11(e) of the Act. The impugned mark is neither distinctive nor capable of distinguishing the first respondent's goods. In the usual course, the first respondent filed its counter statement. The learned Assistant Registrar heard the matter on 22.2.1999 and as observed by him that the learned counsel for the opponent in the matter restricted her arguments to Section 12(1) and thus, the Assistant Registrar has chosen to examine the matter under the parameters of Section 12(1) only. The learned counsel for the appellant argued before the Assistant Registrar that the appellants are manufacturing and marketing medicines in tablet form for the treatment of asthma under their registered trade mark "TEDRAL" and these tablets can only be purchased from the druggists/chemists on Doctors prescriptions only. Thus, the impugned mark "KIDRAL" being deceptively similar to the registered mark "TEDRAL" of the appellant, chances of confusion and deception are bound to happen in course of time. The learned counsel for the first respondent submitted that the medicines manufactured by the respondent are generally sold/purchased only on Physicians/Doctors prescriptions. The medicine/drug concerned under the impugned mark is also a schedule 'H' drug which can be sold/ purchased on Physicians prescription only. There is no possibility of chemists or customers getting confused while selling/purchasing the drugs. He argued that the marks in question are not similar visually as the mark of the first respondent starts with a prefix "KI" and the registered trade mark of the appellants starts with the prefix 'TE". Since there is a prima facie difference between the two prefixes, there is no scope for confusion. In view of the above, the Assistant Registrar came to the conclusion that the rival marks in the instant matter before him are dissimilar to each other. In view of the above, he ordered for dismissal of the opposition and acceptance of the application. In the appeal filed before the High Court of Gujarat at Ahmedabad, the appellant has submitted that the impugned mark is deceptively and confusingly similar to the trade mark "TEDRAL" the name of the appellant. Furthermore, the goods in question being "Medicinal and Pharmaceutical preparations" the prospect of harm to the general public by virtue of any confusion can be extremely dangerous. Established principles of law in the matter of testing the confusing similarity amongst the marks inter se has not been taken into consideration. The Assistant Registrar is patently wrong in concluding that the goods in question are Schedule 'H' drugs. He has completely overlooked that the first respondent has sought for registration for "Medicinal and Pharmaceutical goods". The appellant holds the registered proprietorship of trade mark "TEDRAL" for "Pharmaceutical preparations". Section 12(1) of the Trade and Merchandise Marks Act, 1958 is a statutory bar to allowing such registrations whereunder allowing registration of any trade mark in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods is barred. The appellant's trade mark TEDRAL in class 5 was registered under No.130520 on 12.8.1947 and has been renewed periodically from time to time and is still subsisting as a valid mark on the Register of Trade Marks. The appellant has discussed the principles laid down in the various cases cited by the first respondent in support of his claim before the Assistant Registrar and has distinguished the applicability thereof in the instant matter. The appellant has further cited some cases in support of his claim for non acceptance of the registration of the mark. We do not propose to repeat the ratios of those cases here. The first respondent filed its reply to oppose the appeal. It emphasized that the test in the matter of considering deceptive similarity is distinct in respect of consumer goods viz. peppermint, chocolates, etc. than the medicinal preparations and more so in relation to the goods covered under Schedule 'H' and 'L' of the Drugs and Cosmetic Rules. First respondent has submitted that the mark KIDRAL is an invented word coined out of two noun words, that is, 'KIDS' and 'ELECTRICAL'. The word 'KID' part of the mark is taken out of the word Kids and RAL part of the mark is taken out of the Electricals. The first respondent has spent huge amount on publicity and also has mentioned sale figures from 1988 to 1997. The first respondent relied upon certain judgments wherein certain High Courts have held that when the goods are pharmaceutical and the products are sold on the doctor's prescription, chances of confusion is less or far remote, as in A. Wulfing Vs. C L & P Laboratories Ltd., AIR 1984 Bombay 281. The first respondent also claimed the benefit of Section 12(3) of the Trade and Merchandise Marks Act. In the rejoinder filed by the appellant, it has generally reiterated the averments made by it in the appeal.
(3.) THE Board in its sitting held at Ahmedabad on 21.12.2004 heard the matter. Shri Chander Lall appeared for the appellant and Shri Y.J. Trivedi appeared for the first respondent.;