Bristol-Myers Squibb Company vs Cachet Pharmaceuticals Ltd

K.N. Basha, J

1 . This appeal is preferred by the appellants challenging the order passed by the Assistant Registrar of Trade Marks, New Delhi dated 04/05/2009 refusing the application filed by the applicants for registration of their trade mark TAXOL as per application No. 1204040 in class 5 and allowed the opposition filed by the respondent under No. DEL - 200031.

2 . Learned counsel for the appellants Mr. Kenneth Benjamin and learned counsel for the respondents Mr. Ajay Sahni are present today.

3 . Mr. Kenneth Benjamin, the learned counsel for the appellants would vehemently contended that the impugned order passed by the Assistant Registrar of Trade Marks, New Delhi is liable to be set aside as the Assistant Registrar has not given any such findings or reasons for refusing the application of the appellants for registration of their trade mark TAXOL. It is contended that the Assistant Registrar has rejected Form 16 filed by the appellants for seeking relief of amendment of the application as they have stated in the application submitted in the year 2003 as "proposed user" of the trade mark TAXOL due to inadvertence and they have to amend the same as they are using the trade mark TAXOL right from the year 1992. It is contented that the Assistant Registrar has brushed aside the affidavit of Doctors filed along with TM-16 as "stereotype". It is contented that the Assistant Registrar has not at all referred the contents of the affidavit. It is further contented that the Assistant Registrar also ignored evidence of communication sent by the Drug Controller and yet another evidence produced by the appellants to substantiate their claim of prior use. The learned counsel would contend that the Assistant Registrar also observed in the impugned order that no special circumstances has been shown by the applicants/appellants and rejected the application on such vague grounds. Therefore, is contented that the impugned order was passed in violation of principles of natural justice and accordingly, the same is liable to be set aside.

Per contra, Mr. Ajay Sahni, the learned counsel for the respondents would strongly contend that there is no irregularity in the impugned order. It is contented that the Assistant Registrar has rightly rejected the evidence adduced by the appellants on the ground that the said affidavits produced by the appellants are "stereo-type". It is further contented that the appellants have not produced any evidence substantiating their claim that they are using the trade mark from the year 1992. The learned counsel would submit that the Assistant Registrar has assigned various reasons and no grounds were made out to set aside the impugned order.

5 . We have given our careful consideration to the rival contentions put forward by either side and perused entire materials available on records and the impugned order.

At the outset, it is to be stated that the Assistant Registrar has rejected Form TM-16 filed by the appellants for amendment of the application in respect of inadvertent statement made in the original application submitted in the year 2003 as "proposed user" instead of stating about their prior use without assigning any valid reason. It is pertinent to note that the Assistant Registrar has not at all considered the evidence given by the appellant through affidavits of Doctors who claim to have prescribed TAXOL. It is also seen that the Assistant Registrar has also brushed aside and over looked the other evidence namely, the communication sent by the Drug Controller to the Doctors. It is curious to note that the Assistant Registrar has not whispered a word whether he is accepting or rejecting the said evidence. It is open to the Assistant Registrar to consider the evidence adduced by the appellants and render his finding. But in the instant case, he has not at all considered the evidence as pointed out earlier and in respect of the evidence of Doctors filed through affidavits, the Assistant Registrar simply turned down the same by making a vague statement to the effect that they are "stereotype". It is pertinent to note that the findings are mainly revolving around the question of prior use by the appellants and such being the position, the non consideration of the evidence adduced by the appellants would vitiate the entire order on the ground of flagrant violation of principles of natural justice.

7 . In view of the aforesaid reasons, we are constrained to set aside the impugned order. Consequently the appeal is ordered and the matter is remanded back to the Assistant Registrar of Trade Marks, New Delhi to consider the application of the appellants under No. 1204040 in class 5 afresh by permitting them to amend the application and reconsider the amendment application in Form TM-16. It is open to both the parties to put forward their respective contentions. It is made clear that the above said exercise shall be completed by the Assistant Registrar within a period of three months from the date of receipt of this order and other records, if any, from this Board. The Miscellaneous Petition No. 231/2010 is closed. It is further made clear that in the event of amendment application is allowed, the learned Assistant Registrar shall follow the procedure afresh.