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Judgment
Syed Obaidur Rahaman, Technical Member
This Miscellaneous petition has been filed for stay of operation of the impugned order of the Assistant Registrar of Trade Marks, Chennai whereby
the opposition of the Appellant was disallowed and the application of the first Respondent for registration was accepted for proceeding to registration
subject to amending the goods to be read as ""pharmaceutical preparation for human use to be sold on doctor's prescription only"" by filing a request on
Form TM-16.
The Miscellaneous Petition, when came up for hearing for the first time on 4.12.2006, was adjourned to 13.12.2006, for enabling the first
Respondent to file their counter statement. The first Respondent filed their counter statement on 11.12.2006, denying all the material averments made
in the miscellaneous petition. The said petition was taken up for hearing on 13.12.2006, wherein Senior Counsel Shri P.S. Raman alongwith Ms. Charu
Mehta and Ms. Gladys Daniel, Advocates appeared for the Appellant and Shri M.K. Rao Advocate appeared for the first Respondent.
Learned Counsel for the Appellant contended that the Assistant Registrar erred in finding that the goods and the rival marks are also totally
different and as such is totally incompatible with and contradictory to her own finding in that very order that the mark applied for is identical to the
opponent's trade mark. He further contended that the learned Assistant Registrar, while carving out unnecessary distinction between the two sets of
goods or products, has forgotten that the products in question are pharmaceutical products, where utmost caution and care need to be exercised. In
support of his contention reliance was placed on the decision of the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 (21)
PTC 541 (SC). The Learned Counsel submitted that since the first Respondent's application for registration is on the basis of 'proposed to be used', no
hardship or inconvenience would be caused to him it operation of the impugned order of the Assistant Registrar is stayed till the disposal of the appeal
and as such the balance of convenience is in favour of the Appellant.
The Learned Counsel for the first Respondent contended that the Appellant has not brought out any convincing reason for grant of stay of operation
of the impugned order. The Appellant has not been vigilant to pursue the petition for stay which was filed in March 2006; if it was so urgent, the
Appellant could have filed application requesting the Board for early hearing of the stay petition. He further contended that the Appellant asking for a
stay would tantamount to asking for the main appeal itself being decided in their favour.
We have heard both counsel carefully and gone through the pleadings. After careful consideration of the contentions made by both counsel, we are
of the view that in deciding the same we have to go into the issues like whether the Assistant Registrar has erred in her findings, whether decision in
Cadilla's case is applicable, whether balance of convenience is in favour of the Appellant (especially when the finding of Assistant Registrar at page 7
of the impugned order is that the applicants are using the trade mark on the date of application, which is contrary to the contention of Learned Counsel
for the Appellant that the application for registration is on the basis of 'proposed to be used') which can be gone into only of the final hearing of the
appeal. Hence, pending the appeal (which is ripe for final hearing), no interim order can be granted staying the registration of the trade mark. If any
interim order is granted, it will amount to impliedly granting main relief itself, which can not be done at this stage. T(Sic) Registry is directed to post the
appeal for hearing in February, 2007. The M.P. No. 43/2006 is ordered on above terms.