S. Usha, Member (T) - (1.) THE above appeal is against the order dated 28.06.2001 passed by the Assistant Registrar of Trade Marks disallowing the opposition No. DEL -8313 and allowing the application No. 517814 in class 5 to proceed to registration under the provisions of the Trade and Merchandise Marks Act, 1958 (in short the Act).
(2.) THE first respondent herein filed an application for registration of the trade mark 'RECIBION' under application No. 517814 in class 5 in respect of medicinal and pharmaceutical preparations on 03.10.1989 claiming user since 01.04.1987. The said application was accepted and advertised in the Trade Marks Journal No. 1065 dated 16.10.1993 at page 689. the appellant herein filed their notice of opposition on 15.12.1993 opposing the registration. The first respondent filed their counter statement denying the material averments made in the notice of opposition. The Assistant Registrar/second respondent herein passed the impugned order on the findings as hereunder: (a) The impugned trade mark 'RECIBION' is not deceptively similar to that of the appellant's trade mark 'CEBION' and therefore not prohibited by operation of Section 12(1) of the Act. (b) The appellant's registered trade marks are phonetically and visually different from that of the impugned trade mark and is not prohibited for registration under Section 11(a) of the Act. (c) The first respondent has been using the impugned trade mark for about one year and more on the date of application for registration and they are entitled to claim to be the proprietor of the trade mark and the registration is in accordance with the provisions of Section 18(1) of the Act. Aggrieved by the said order, the appellants filed an appeal before the Hon'ble High Court of Delhi. The same was numbered as CM(M) No. 587 of 2001. The appeal was, thereafter, transferred to the Intellectual Property Appellate Board as per the provisions of Section 100 of the Trade Marks Act, 1999 and re -numbered as TA/179/2003/TM/DEL.
(3.) THE appellant is a globally renowned pharmaceutical corporation engaged in the business of manufacturing and marketing various pharmaceutical and medicinal preparations throughout the world including India. The appellant has its subsidiary in India under the name E Merck India Limited. They are manufacturing and marketing pharmaceutical preparations under various trade marks all of which have common suffix 'BION' and have been using the same in India for the past 15 years.;