Syed Obaidur Rahaman, Technical Member - (1.) THIS is an appeal under Section 91 of the Trade Marks Act, 1999 against the order dated 19.06.2006 passed by the Assistant Registrar of Trade marks, Ahmedabad in Opposition No. AMD-62103 to application No. 980737 in Class 5.
(2.) The facts of the case is that the appellant is a company duly incorporated under the law of Germany. The appellant is an old, well known, reputed and established company since over the past 150 years engaged in the manufacture and marketing of a wide range of pharmaceutical and medicinal preparations. The appellant's various pharmaceuticals and medicinal preparations are manufactured and sold throughout the world under distinctive trade marks. Owing to their superior quality, reliability and the extensive publicity/promotion, the appellant's pharmaceutical and medicinal preparations and/or the trademarks under which they are sold have become extremely popular and are very well known amongst the members of the trade, medical fraternity and all general public throughout the world including India. As a consequence the appellant's pharmaceutical and medicinal preparations also generate substantial sales/revenues for the appellant. The appellant has a subsidiary Indian company under the name Merck Limited and sell its product under its various trade marks directly or through its Indian subsidiary. The appellant is the proprietor and the earlier applicant in India of the trade mark 'CANDISTAT' under trade mark application No. 622787 dated 22.03.1994 in Class 5 in respect of pharmaceutical and medicinal preparations. The said trade mark has been in use in India by the appellant through its Indian subsidiary. The pharmaceutical and medicinal preparations manufactured and sold under the trade mark 'CANDISTAT' by the appellant are used to cure Onychomycosis - troublesome fungal nail infection, which may present clinically in various forms. The sales of the appellant's under the trade mark 'CANDISTAT' are continuous and substantial. In the year 1998, the sales were Rs. 2.40 million which rose to about Rs. 14.40 million in the year 2003. Such humongous growth in a span of five years explicitly substantiates that the pharmaceutical and medicinal preparations of the appellant manufactured and sold under the trade mark 'CANDISTAT' are of high quality and most reliable. By virtue of extensive, continuous and uninterrupted use the trade mark 'CANDISTAT' has become well known and has acquired tremendous goodwill and reputation in the course of trade. The appellant opposed the impugned mark 'CANDITAS' vide Notice of Opposition dated 09.10.2002. A counter statement dated 14.05.03 was filed by the respondent No. 2 and which was served upon the applicant's erstwhile attorneys on or about 08.10.2003. The appellant's erstwhile attorney filed a request on 22.12.03 for seeking extension of time from 08.12.03 to 08.01.04 to file evidence in support of the Notice of Opposition. Thereafter, the appellant's erstwhile attorneys vide their letter dated 14.01.04 filed further request for extension of time from 08.01.04 to 08.02.04 to file the evidence in support of Notice of Opposition along with an interlocutory petition praying that the accompanying affidavits of the appellant along with Annexure A and B should be taken on record as evidence in support of opposition under Rule 53 of the Trade and Merchandise Marks Rules, 1959 (in short old Rules) and under Rule 50 of the Trade Marks Rules, 2002 (in short new Rules), and the delay in filing the evidence in support of opposition be condoned, as the evidence filed by the appellant is absolutely necessary for the determination of issues between the parties. There is a delay of only six days in filing the evidence in support of opposition as the appellant had been collecting necessary documentary evidence and information from various sources to be included in the affidavit and the process of inquiry, correspondence, collection, sorting and collation of the relevant evidence consumed considerable time in excess of the prescribed time. The respondent No. 2 filed his evidence in support of his application vide letter dated 18.03.04 and further requested that it may be taken on record and to proceed further with the matter. Apparently the respondent No. 2 has no objection in allowing the appellant's interlocutory petition dt.14.01.04 and admit the affidavit filed as evidence in support of notice of opposition under old Rule 53 and now read as Rule 53 of the old Rules and Rule 50 of the new Rules.
(3.) THEREAFTER, the Trade Marks Registry, Ahmedabad appointed hearing of the interlocutory petition on 15.07.04. Vide letters dated 9th and 10th July, 2004 advocate for appellant filed the written submission for hearing scheduled for 15.07.04. The hearing scheduled for 15.07.04 was adjourned due to administrative reasons. Next hearing was scheduled for 27.08.04. Vide letter dated 20.08.04 the appellant filed their written submission for hearing scheduled on 27.08.04. The interlocutory petition dated 14.01.04 was, however, not allowed and consequently the evidence in support of notice of opposition as sought to be filed under old Rule 53 of the old Rules (Rule 50 of the new Rules) could not be taken on record and the outcome of such hearing was recorded by respondent No. 1 by way of order dated 19.06.2006 and which is the subject matter of present appeal.;