S. Jagadeesan, J. (Chairman) - (1.) M/s. Reliance Formulations Private Ltd., the first respondent herein, on 18.7.1990 filed an application No. 533517 in class 5 of the Fourth Schedule of the Rules framed under the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, for registration of the trademark word per se 'ZOLIPAX', in respect of pharmaceutical and medicinal preparations. The said application was accepted and advertised in the Trade Marks Journal No. 1080 dated 1.6.1994 at page 305. On 25.8.1994, the appellants herein M/s. The Wellcome Foundation Limited, London filed their opposition stating that they are having registration in India for (1) Trade Mark 'ZOVIRAX' registered under No. 327933 dated 17.8.1977 in class 5 in respect of pharmaceutical and medicinal preparations and substances, veterinary preparations and substances; (2) Trade Mark 'ZOVIRA-X' registered under No. 335612 dated 14.4.1978 in class 5; and (3) Trade Mark 'ZOVIREX' registered under No. 335613 dated 14.4.1978 also in class 5 in respect of the same products. The appellants herein are carrying on an establishment business as manufacturers and merchants of wide variety of pharmaceutical and medicinal preparations on a world-wide basis. By virtue of the registration and long standing use of the mark internationally, including in India, the appellant company enjoys exclusive proprietary rights. Since the impugned mark of the first respondent is identical and deceptively similar to that of the appellant's mark, the registration of the same is violative of Section 9, 11(a), 11(e), 12(1) and 18(1) of the said Act. The first respondent filed their counter statement on 29.11.1994 denying all the material averments contained in the notice of opposition and further stated that they adopted the trademark 'ZOLIPAX' in early 1990 and started the use of the mark since 16.7.1990. Thereafter, they applied for registration of the impugned mark on 18.7.1990. Subsequently, the appellant herein filed evidence in support of their opposition and the first respondent also filed their evidence in rebuttal. The Assistant Registrar of Trade Marks heard the matter on 16.12.1996 and under the impugned order, the Assistant Registrar of Trade Marks dismissed the opposition No. AMD 761 of the appellant herein and accepted the application of the first respondent for registration, finding that the impugned mark 'ZOLIPAX' is a coined word and the objection under Section 9 cannot be sustained as the appellant did not take any such objection in their opposition. Further, the Assistant Registrar of Trade Marks held that the impugned mark is totally distinguishable from the registered marks of the appellants and there is no similarity except the prefix 'ZO' and the suffix 'AX'. Apart from that, the Assistant Registrar of Trade Marks further held that there are conflicting versions with regard to the year of use of the mark by the appellant and as such, the use of the appellant's mark can be determined only on the basis of the evidences adduced by the appellant. The appellant produced the invoices only from the year 1995 and hence though the appellant had registered the mark much earlier, those marks were not put to use till 1995 and the use of the appellant of their mark is subsequent to the use of the impugned mark by the first respondent. Consequently, the Assistant Registrar of Trade Marks held that there will be no confusion or deception in the trade. Aggrieved by the same, the appellant preferred the appeal in Appeal No. 2 of 1997 on the file of the High Court of Gujarat at Ahmedabad, which was transferred to this Board in compliance of Section 100 of the Trade Marks Act, 1999. During our sitting at Ahmedabad, we heard the appeal on 21.12.2004. Shri T.N. Daruwalla, the learned counsel appeared on behalf of the appellant and Shri R.R. Shah, the learned counsel appeared for the first respondent.
(2.) The learned counsel for the appellant vehemently and very elaborately contented that the Assistant Registrar of Trade Marks, in deciding the similarity of the two trademarks had committed an error in pointing out the minute differences of different alphabets used in the name while comparing the conflicting marks. He also contented that the Assistant Registrar of Trade Marks has totally failed to consider the well laid principles of the Hon'ble Supreme Court as well as the other High Courts, in the comparison of the marks. The Assistant Registrar totally mis-directed himself in not considering the phonetic, visual as well as the writing similarity of both the marks. The product of both appellant as well as the first respondent being pharmaceutical drugs for human consumption, the confusion that would cause is hazardous. The Assistant Registrar of Trade Marks is not correct in finding that there is no similarity between the two marks in view of use of the letters 'L' and 'P' as 3rd and 5th letters in the name of the first respondent's mark instead of 'V' and 'R' in the name of the appellant's mark. The learned counsel further contented that the burden of proof is on the first respondent/applicant to establish that the registration of their mark will not create any confusion or deception in the trade. When the applicant's marks were registered as early as 1977 and 1978 and the adoption of the impugned mark by the first respondent is of the year 1990, definitely the appellant's mark had attained a reputation and has become a well known mark especially when there is no dispute with regard to the international reputation of the same. The adoption of the first respondent's mark is from 16.7.1990 and the application for registration is on 18.7.1990. Hence within two days, the first respondent's mark could not have attained any distinctiveness in respect of their goods. He also referred to certain passages from the Books ? The Law of Trade Marks and Passing-off by Dr. S. Venkateswaran; ? The Trade and Merchandise Marks Act 1958 by Shri Shavaksha; ? TRADE MARKS and Passing-off - 4th Edition by P. Narayanan; and ? Kerly's Law of Trade Marks & Trade Name, 12th Edition regarding Onus of Proof, the disastrous consequences arising from comparison and the Rules of Comparison. He also relied upon the following judgements, wherein certain names have been held to be similar and deceptive:- Torrent Pharmaceuticals Ltd. v. The Wellcome Foundation 2002(24) PTC 580 (2) AHPC v. K.V. Chennamallu 2004 (28) PTC 154 (IPAB) Ciba Ltd. v. M. Ramalingam 1957 Bom. L.R.(59) 548 (4) Corn Products v. Shangrila Food Products 1960 (1) SCR 968 (5) Astra-IDL Ltd. v. TTK Pharma Ltd. AIR 1992 Bom. 35 Cadila Health Care Ltd. v. Cadila Pharmaceuticals (2001) 5 SCC 73 Milment Oftho Ind. v. Allergan Inc. AIR 2004 SC 3355 Himalaya Drug Co. v. Warner Lambert Pharma Co. 1969 Bom. L.R. (72) 528 Nucron Pharma v. International Pharma 1994 IPLR 56 American Home Products & Wyeth Labs v. Lupin Labs Ltd. 1996 IPLR 61. On the contrary, Shri R.R. Shah, the learned counsel for the first respondent contented that the registration of the trademark will not confer any absolute right on the registered proprietor. The registration should be accompanied by the use of the mark in order to have the protection and distinctiveness. Though the appellant registered their marks in the year 1977 & 1978, till 1995 neither the appellants nor on their behalf the mark was used. Though the appellant had registered the mark much earlier, the first respondent is the first user of their mark and as such, it is not open to the appellant to claim any right. The initial burden is on the registered proprietor to establish that their mark has attained reputation and thereby it has become a well known mark in the trade as well as distinctiveness of their goods. Only on the discharge of this initial burden, the burden of proof shifts on the first respondent/applicant to establish that there is no confusion or deception and the mark is registerable one. When the appellant's mark is not in use, there is no question of confusion or deception arising because only the product of the first respondent is in the market. The learned counsel further contented that the trademark of the first respondent is not similar to that of the appellant either phonetically or visually. The pronouncement of both the names is clearly distinguishable and there cannot be any confusion or deception. Even if it is held that the marks are identical and similar, still by the non-use of the appellant's mark on the date of the application, the first respondent is entitled for the registration of the same and consequently there is no infirmity in the impugned order.
(3.) WE carefully considered the above contentions of both the counsels. Before entering into other questions in the opposition proceedings, we have to consider, on whom the burden of proof lies. Though it is on the applicant to establish that he is entitled for registration of the trademark applied for, where the objection to the application is based on the alleged use and reputation of the opponent's trademark, the onus of establishing those facts lies upon the opponent as held in the case of Arthur Fairest Ld,'s application reported in 1951 RPC 197 at page 207 in the following terms "Before the objection under Section 11 can be sustained it is necessary for an opponent to establish a reputation in trade in connection with a trading style, device or mark of some character, before the tribunal or court will proceed to consider whether, having regard to that reputation, the possibility of confusion upon reasonable user of the mark applied for will arise." It is so held in yet another case in The Appointed Person reported in 2000 RPC 285 at 287 in the following terms "Burden of proof in an opposition such as this lies on the opponent. It is for the opponent to show that the relevant likelihood of confusion exists". Hence it is clear that the initial onus is on the opponent to establish their reputation enjoyed by the use of the same and as and when the initial onus is discharged, the burden is on the applicant to show that the registration of his mark is not likely to deceive or cause confusion. The onus can be discharged by filing evidence on relevant facts.;