Z.S. Negi, Vice-Chairman - (1.) THIS is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 1.5.2006 passed by the Senior Examiner of Trade Marks whereby the application for registration of Trade Mark "OFLEX" has been refused.
(2.) The brief facts giving rise to the appeal is that the appellant Mr. Vikash Rajgarhia is trading as a proprietor in the name and style of Finecure Pharmaceuticals. The appellant on 6.9.2000 coined the word 'OFLEX' by combining letters 'OFL' of the generic molecule 'Ofloxacin' with the letters 'EX' of the word 'excipients' and adopted the said word as the trade mark and obtained permission from the concerned authority to manufacture pharmaceutical preparation. An application No. 1057263 in Class-5 in respect of Pharmaceutical and Medicinal preparations was filed on 7.11.2001 seeking registration of the trade mark 'OFLEX' claiming user since 4.1.2000 and the said application was advertised before acceptance in the Trade Marks Journal Mega 6 dated 25.11.2003. The said application for registration was opposed by the respondent No. 1, a company engaged in the business of manufacturing and/or marketing and/or dealing in similar goods that is to say medicinal and pharmaceutical preparations, by filing opposition No. AMD-174953 on the grounds, inter alia, that in or about 2000 it originally conceived the trade mark 'OFLER' and finally adopted the same by filing application No. 948619 (proposing to be used) in class 5 in respect of its goods; that after obtaining Drug Licence it commenced actual commercial use of mark by manufacturing and/or marketing its goods in or about January, 2001; that it is the proprietor and prior user of the trade mark 'OFLER' in respect of aforementioned goods and the appellant's application was subsequent to the respondent No. 1's prior application No. 948619 filed on 18.8.2000; that it is the prior adopter and user of the trade mark since 31.1.2001 and has launched the medicine prior to the appellant; that it is the registered owner of the trade mark 'OFLER-TZ' under No. 1093769 as of 9.4.2002 and that the use of mark 'OFLER' or any similar mark with or without variation by another person in respect of the same or similar goods is likely to deceive the public and cause confusion among the trade. After receiving evidence from both parties the matter was posted for hearing 31.3.2006. The Senior Examiner of Trade Marks after hearing the parties has refused the application for registration concluding as under: It is a hard case where marks are deceptive, that too pharmaceuticals having same ingredients, adoption hardly few months gap and use also few months away. One earlier application to support the case of opponents is as 'proposed to be used' and withdrawn without coming up for reasons to withdraw, insertion of use in regd. application also at later stage. Opponents and applicant both have filed half hearted evidences not bothering seriously, the concern. But certainly the onus is more upon applicants to show that they have right of registration an hence applicants stand to loose if evidence of applicant does not over weigh against evidence of opponents, the regd. owner of conflicting mark. The applicants have not been able to discharge the onus. In view of the above the registration of mark of applicants is refused. Aggrieved by the impugned order dated 1.5.2006, the appellant has preferred this appeal on the grounds, inter alia, that the appellant is prior in adoption of the said coined word, used the same for almost one year and thereafter applied for registration shows that appellant is lawfully the first and rightful proprietor of the mark 'OFLEX' under Section 18(1) and has a right to registration absolutely under Section 18(4) of the Act; that the appellant having earned the dual priority on the impugned mark can neither have caused confusion or deception to the consumers of anti-bacterial pharmaceutical preparations nor have passed off its goods as goods of the respondent No. 1 in contravention of Sub-sections (1) and (3), respectively, of Section 11 of the Act; that having regard to the said dual priority, the trade mark 'OFLEX' be granted registration under Clause (a) of Section 34 of the Act and that the appellant craves leave to file Form TM-16 to correct/amend under Section 22 of the Act the correct date of user which is 28.11.2000.
(3.) THE respondent No. 1 filed the counter-statement on 4th December, 2006 denying the material averments made in the appeal and the appellant filed on 14th December, 2006 the reply to the counter-statement. THE appeal was fixed for hearing on 20.2.2008 before the Circuit Bench sitting at Ahmedabad when Shri R.R. Shah, Advocate appeared on behalf of the respondent No. 1 but none appeared on behalf of the appellant. THE appellant did not appear before the Circuit Bench despite service of hearing notice, the arguments of learned Counsel for the respondent No. 1 was heard. After conclusion of the hearing, the appellant has sent an affidavit annexing therewith documents which the appellant intended to rely upon. As the affidavit and documents were filed after conclusion of the hearing of the appeal and the same were filed without leave of this Appellate Board, the same for obvious reasons cannot be taken into consideration by this Appellate Board at this stage.;