Dharam Singh,ARTM. - (1.) A trade mark consisting of an expression 'BACTOPRIM D.S.' was applied for registration by the above named applicants in respect of "Medicinal and Pharmaceutical preparations" in Class 5 under application No. 434938 dated 7.3.1985 claiming the user therein since 13.8.1984 under the provisions of Trade & Merchandise Marks Act, 1958 (herein after referred to as the Act). Eventually, the mark was advertised as accepted in Trade Mark Journal No. 1001 dated 16.2.1991 at page 1336.
(2.) The above named opponents notified their intention to oppose the registration of the impugned trade mark by filing notice of opposition dated 10.6.1991 alongwith a request on Form TM-44 for condoning the delay in filing the notice of opposition inter alia stating the grounds of opposition as follows :- (1) That the opponents carry on an old established and reputed business in manufacturing and selling a variety of medicinal and pharmaceutical preparations all over the world. (2) That the opponents are the proprietors of the mark 'BACTRIM' registered under No. 250035 as of 20.6.1968 in Class 5 advertised in Trade Mark Journal No. 497 dated 16.2.1970 at page 842 and they have been using the said trade mark in respect of their product continuously and extensively over past many years. (3) That by virtue of extensive use of the said trade mark throughout the world for past many years, it exclusively come to associate with the opponents and their manufacture in the minds of the general public and attained so much goodwill and reputation during the course of trade. (4) That the trade mark applied for registration under the impugned application consisting of word 'BACTROPRIM D.S.' which is deceptively similar to the opponents' said registered trade mark and the goods in respect of which the impugned trade mark is sought to be registered are the same as those covered under the registration of the opponents' said trade mark. (5) That by reason of the use and reputation of the opponents' said registration, the use and registration of the impugned trade mark is likely to deceive or cause confusion among the pubic and trade and the mark is not registrable under Section 11(a) of the Act. (6) That the use of the mark applied for would be an infringement of the opponents' said registered trade mark and would lead to pass off - the, applicants' goods as the goods of opponents. Therefore, it would be disentitled for protection in the court of law under Section 11(e) of the Act. (7) That the impugned trade mark is not registrable. It is neither adopted to distinguish, nor capable of distinguishing the applicants' goods and thus it does not satisfy the requirements of Section 9 of the Act. (8) That the applicants' are not the proprietors of the mark. They have no reason or justification in filing the application for registration of an identical or deceptively similar trade mark except with an ulterior motto of trading upon the benefits of reputation and goodwill acquired by the opponents' said trade mark. Moreover, the user claimed in the application being false and untrue is denied. The mark is, therefore, contrary to Section 18(1) of the Act. Finally, the opponents prayed this Tribunal to refuse registration of the impugned application with an order as to costs in their favour by exercising its discretion vested under Section 18(4) of the Act. In their counter statement dated 2.12.1991, the applicants denied all the allegations contained in the notice of opposition beyond what was the matter of record and specifically admitted by them, stating that they were the true proprietors of the impugned trade mark as they adopted the mark honestly with a bona fide intention in the year 1984, since to the best of their knowledge, information and belief; there was none using the similar trade mark in respect of medicinal and pharmaceutical preparations. They contended that the trade mark 'BACTOPRIM' was coined and invented from the ingredients that go into the formulation. 'BACTOPRIM' was coined by taking 'BACTO' from the expression 'anti-bacterial' and 'PRIM' from the expression Trimethoprim'; and letters 'D.S.' were taken from the expression 'double strength'. The said trade mark 'BACTOPRIM D.S.' is being used by the applicants continuously and extensively over since 13.8.1984. By virtue of such extensive and bona fide use the said trade mark has become exclusively associated with the goods of the applicants' firm. The applicants have strongly repudiated the allegations made in para 10 of the notice of opposition as baseless and ill founded. They empathetically denied the alleged use and reputation of the opponents' trade mark and contended that their trade mark was entirely different from the opponents' trade mark both visually and phonetically. They added that both the products i.e. 'BACTOPRIM D.S.' and 'BACTRIM' are scheduled drugs and can be sold only on written prescription of a registered medical practitioner. Therefore, there is no possibility of any confusion or conflict to the trade marks of the opponents and the applicants.
(3.) HAVING regard to the above facts, the applicants prayed this Tribunal to exercise its discretion vested upon Section 18(4) of the Act, adversely to the opponents by dismissing the opposition with an order of exemplary cost in their favour.;