Dharam Singh,ARTM - (1.) ON 12.5.1982, a label mark consisting of word 'MOLY' was applied for registration by the above named applicants in respect of 'medicinal preparations' in class 5 under application No. 389904 under the provisions of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The user of the impugned mark was claimed since March, 1981. Eventually, the application was advertised before acceptance in the Trade Marks Journal No. 913 dated 16.6.87 at page 218.
(2.) M/s. Gufic Private Limited, Kabil Pore, Navsari, Gujarat and also Subhash Road - A, Ville Parle (East), Bombay-57, (hereinafter referred to as opponents) lodged a notice of their intention on Form TM-5 dated 11.9.1987 to oppose registration of the impugned trade mark 'MOLY' inter alia stating the grounds of opposition as follows:- (1) The opponents carry on an old, established business as manufacturers and merchants in (pharmaceutical and medicinal preparations) and they are proprietors of several trade marks in respect of the said goods. One amongst such trade marks is the trade mark 'MOL', which has been used by the opponents in respect of their aforesaid goods since the year 1977. The registration of the said trade mark under application No. 384721 dated 30.12.1981 in class-5 is awaiting. (2) By virtue of long, continuous, open and extensive use throughout the country ever since the year 1977, intensified sales promotion and publicity and high standard of quality of goods, the said trade mark 'MOL' has become distinctive of and is exclusively identified with the goods of the opponents manufacture. Enviable reputation/valuable goodwill is, therefore, occurred to their said trade mark and their goods sold thereunder. (3) The applicants under the impugned application No. 389904 are seeking registration of the trade mark 'MOLY' in respect of the same goods. (4) The trade mark 'MOLY' is neither adopted to distinguish not capable of distinguishing the goods of applicants as the same is a common feminine personal name. Therefore, the impugned trade mark fails to qualify under Section 9 of the Act. (5) In view of the established use and reputation associated with their trade mark 'MOL', the use of an identical or similar trade mark in respect of same goods by the applicants is calculated to facilitate and lead to deception and confusion and to pass off the applicants' goods as and for the goods of the opponents' manufacture and to lead an inference that the applicants and/or their goods are connected with the opponents in the course of trade, is not only detrimental to the opponents but also to the public at large, therefore, is contrary to the provisions of Section 11 of the Act. (6) As the applicants have claimed a meagre user and as on the date of application, the mark has been used for a short period of only one year and two months, the applicants are not entitled for registration under the provisions of Section 12(3) of the Act. (7) The applicants are not and never were the proprietors of the impugned mark as the title to, it had long been established by prior adoption and use by the opponents and therefore, the provisions of Section 18(1) of the Act, stand appear to the registration of the mark in favour of the applicants. Further, the user claimed by the applicants is not admitted by the opponents, in any case, alleged user is not bona fide as the adoption of the mark by the applicants is dishonest ab initio in view of prior adoption and use of their mark by the opponents. (8) In any event, the registration of the impugned trade mark in favour of the applicants still cause embarrassment and is prejudicial to their business and is contrary to the provisions of Sections 9, 11, 12 and 18 of the Act. In view of the grounds stated above, the opponents prayed the Registrar that the instant opposition No. MAS-2005 be allowed with cost and the impugned application be refused registration in exercise of his discretion vested in him under Section 18(4) of the Act.
(3.) THE applicants, in their counter statement dated 19.5.1988 disagreed and disputed the allegations made in para 1, 2, 3 and 5 to 11 of notice of opposition terming the same as incorrect and calculated to mislead the Registrar. THE applicants submitted that there is no prima facie identity or deceptive similarity between the applicants trade mark 'MOLY' and the opponents trade mark 'MOL' and as such there can be no conflict between the marks on the proper and reasonable application of the relevant provisions of the Act. THEy said that their trade mark 'MOLY' is distinctive and is used in respect of their product, which is schedule 'H' drugs and can be sold only on the prescription given by the registered medical practitioner. Hence, there is no question of deception or confusion and the impugned trade mark is eligible for registration, therefore, the grounds of opposition are totally frivolous, misconceived and unsustainable and do not disclose any valid reasons for denial to registration of the impugned trade mark 'MOLY'. THE applicants prayed that registration of the impugned application may be allowed in exercise of his discretion by the Registrar and present opposition be over ruled.;