Z.S. Negi, Vice -Chairman: - (1.) THIS is an application under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for the removal by a total expunction of trade mark No. 1109280 in class -5 from the Register of Trade Marks. During the pendency of the application, the applicant has filed a miscellaneous petition, being M.P.No. 112/2007, seeking for condonation of delay in filing its reply to the counter -statement.
(2.) THE applicant, a private limited company, is engaged in the manufacturing of and dealing in pharmaceutical and medicinal preparations. The applicant honestly coined and adopted the trade mark DROTIN in or about February, 1997 and obtained registration thereof under No. 732349 as of 3.2.1997 in class -5 in respect of medicinal and pharmaceutical preparations, which trade mark is valid and subsisting. The sale of applicant's goods bearing the trade mark DROTIN commenced in 1997 and the applicant has spent substantial amount of money and efforts in promoting the said trade mark. The respondent, a private limited company, is engaged in an established business of manufacturing and merchandising of medicinal and pharmaceutical preparations and allied and cognate goods and has in or about June, 2002 conceived and honestly adopted the trade mark DROT and obtained registration thereof under No. 1109280 as of 5.6.2002 in class -5. In November, 2004, when the applicant came to know of the infringement of its registered trade mark, it filed a Civil Suit (OS) No. 1285 of 2004 for permanent injunction against the respondent wherein the respondent has raised the defence under Clause (e) of Sub -section (2) of Section 30 of the Act and in view of the present rectification application, the application for stay has been withdrawn by the applicant from the High Court of Delhi with liberty to file afresh after the present application is decided. In view of the said defence raised by the respondent, the applicant has filed the present application under Section 125 of the Act. It is averred by the applicant that the entry of the impugned mark has been made without sufficient cause; that the registration was obtained contrary to the provisions of Section 11(2)(a) of the Act and the same continues till now to violate the said provisions; that at the time of commencement of these proceedings, the impugned mark was not distinctive of goods of the registered proprietor and the same is not protected under Section 32 of the Act and that the impugned mark has wrongly been registered and is wrongly remaining on the register. It is further averred that the applicant is a person aggrieved under Section 57 of the Act by the impugned registration and the registration is liable to be expunged under the said section. The respondent in March, 2006 filed its counter -statement denying the material averments made in the application along with the affidavit Dated 6th March, 2006 of Shri K.C. Paul, Vice -President (Planning and Coordination) of the respondent, annexing therewith the statement of sales from 2002 to 2005, photocopies of sales invoices from 2002 to 2005, specimen of packaging materials of DROT products, etc. The applicant filed its reply to counter -statement in September, 2007 along with the affidavit dated 14.9.2007 of Mrs. Kalpana Umakanth, the constituted attorney of the applicant annexing therewith copies of drug licence, statement of sales turnover of DROTIN range and sales promotional expenses and invoices from 1997 -98 to 2004 -05, copy of last renewal of trade mark, etc.
(3.) THE application came up before us for hearing on 21.9.2007 when Shri Amarjeet Singh, Advocate appeared for the applicant and Shri B.N. Poojari, Advocate appeared for the respondent.;