S. Usha, Member (T) - (1.) APPEAL arising out of the order dated 05.01.2007 passed by the Deputy Registrar of Trade marks dismissing the opposition No. MAS -164028 and allowing application No. 105772B in class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 (in short the Act).
(2.) THE first respondent on 9.11.2001 filed an application for registration of the trade mark 'Candizole' (word per se) in class 05 under application No. 105772B claiming user since 01.01.2000. The said application was advertised in the Trade marks Journal Mega 2 dated 25.09.2003 at page 780 and the same was made available to the public on 02.12.2003. The appellant herein filed their notice of opposition on 25.02.2004 and the first respondent herein filed their counter statement on 07.05.2004. On completion of the formal procedures, the matter was heard by the Deputy Registrar and order was passed on the finding that the rival marks on comparison as a whole are phonetically, visually and structurally wide apart and cannot be held to be deceptively similar within the meaning of Section 2(1)(h) of the Act. Section 11 read with Section 12 of the Act is not maintainable as there is no possibility of confusion and deception when the rival marks are not deceptively similar. Adoption of the trade mark 'Candizole' is honest and bonafide and has been adopted without any reference to any other trade mark. The first respondent is entitled to registration within the meaning of Section 18(1) of the Act. The prefix 'Candid' is common for similar products and the appellant cannot claim exclusive right over the word. The opposition has been filed only to delay the registration proceedings. Aggrieved by the said order the opponent/appellant is before us on appeal.
(3.) THE facts of the case are: The appellant is a pharmaceutical company for the last three decades in niche segments like dermatology, diabetes, internal medicines, pediatrics, gynecology and ENT. The appellant is approximately Rs. 8,433.82 million integrated pharmaceutical company marketing its products in 91 countries across the globe. The appellant's research team across its R & D centres are focused on developing formulations for launching branded generics across the globe. In order to distinguish their goods from those of others, the appellants have adopted several trade marks, most of which have been registered under the Act. By virtue of high standards of quality, wide publicity and extensive sale, their trade marks are well known throughout the country and abroad. The appellant is the proprietor of the trade mark 'Candid' and a series of marks containing the word 'Candid' and/or prefix 'Candi' in class 5. The appellant has been vigilant in taking action against the infringers. The appellant adopted the trade mark 'Candid' in the year 1984. The appellant launched their products under the brand name 'Candid' which was instantly accepted by Dermatologists all over India. The appellant thereafter introduced a series of Candid family formulations at regular intervals, encompassing an ever widening spectrum - Candid cream, Candid lotion, Candid Powder, Candid vaginal tablets and Gel, Candid Ear drops, Candibiotic, Candederm, Keto -Candid, Candid -TV, Canditral. The appellant has been using the said trade mark continuously and extensively since 1979. On account of such large scale and long user, the trade marks have come to be associated with the appellants in Indian market and in export markets. The trade mark 'Candid' has thus become a household name in India and abroad and is a "well -known trade mark" within the meaning of Section 2(zg) and Section 11 of the Act.;