Cadila Laboratories Ltd. vs Khandelwal Laboratories Ltd. And Anr.

Raghbir Singh, J

This is an appeal filed in the Gujarat High Court as Appeal No. 5/1996 and the same has been transferred to this Board in terms of Section 100 of

the Trade Marks Act, 1999 and has been numbered as TA/261/2004.

M/s. Cadila Laboratories Private Ltd., Ahmedabad, filed an application for registration of trade mark 'ASTLER' (word per se) as application No.

487853 in Class 5 in respect of Pharmaceutical and medicinal preparations in Part A of the Register on 23.03.1988. The mark was proposed to be

used.

M/s. Khandelwal Laboratories Ltd., Mumbai, Respondent No. 1, in the present appeal filed an opposition on 27.7.1992. They submitted that they

are the subsequent proprietors of registered trade mark 'ASTA' under No. 162565 as of 28.1.1954. They submitted that the said registration has been

renewed from lime to time till date. The impugned mark is deceptively similar to their mark. They challenged the impugned mark on the ground of

Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958. The appellants filed their counter statement on 13.1.1993, denying all the

material grounds relied upon by the opponents. The opponents did not file any evidence and relied upon the facts stated in the notice of opposition only.

The appellant filed their evidence by way of affidavit of their legal manager.

The Assistant Registrar of Trade Marks heard the matter on 28.9.1995. The learned counsel for the opponent opted to confine his submissions only

to the objections taken under Sections 12(1) and 18 of the Act. The finding of the Assistant Registrar in the matter was that with a view to make an

examination of the mark under Section 12(1), one has to go by the definition of deceptive similarity as given under Section 2(1)(d) of the Act. This

question is to examine as to whether the mark 'ASTLER' so nearly resembles the registered trade mark 'ASTA' as to be likely to deceive or cause

confusion. Both the marks being the word marks, he deemed it fit to follow the rules of comparison laid down by Justice Parker in the case of

Pianotist (1906) 23 RPC 774 at page 777. The Assistant Registrar relied upon some more English cases and reached the conclusion that the marks

are deceptively similar to each other. Similarly, he concluded that the goods covered under both the marks are similar and thus he reached the

conclusion that the objection raised under Section 12(1) is to be sustained. Then, he proceeded to examine the matter under Section 12(3) of the Act

and observed that the honesty of adoption and user is the sine qua non for considering an application under Section 12(3) of the Act. But, in this case,

the applicants have not come out with any explanation as to how and as to why they hit upon the mark 'ASTLER'. Surely, it is not coined from the

generic name ""Paracetam"" in respect of which the mark is said to being in use. Thus, the applicant had not produced any evidence to show that the

impugned mark was honestly adopted or bona fidely used by them even subsequent to the date of the application. He found no special circumstances

in the case which could bring the applicant's case within the ambit of Section 12(3). In relation to the examination of the mark under Section 18(1), the

Assistant Registrar, was of the view that since the adoption of the mark by the applicant was dishonest, so the objection of the opponent under Section

18(1) of the Act, is to be upheld. Having upheld the objections raised under Sections 12(1) and 18(1) of the Act, the Assistant Registrar reached the

conclusion that no discretion is left with him and thus the impugned application is to be disallowed.

The appeal against the decision of the Assistant Registrar was taken up by the Board in its sitting held at Ahmedabad on 27th July, 2004. Shri R.R.

Shah, appeared for the appellant and neither Respondent No. 1 nor any counsel on his behalf appeared.

Shri Shah strenuously argued that since Respondent No. 1 has not filed any of his evidences, it is not sure as to whether the mark has been used at

any, point of time. He argued that it is borne on the record that Respondent No. 1 is not the registered proprietor. He claims himself to be a

subsequent proprietor. What is the capacity or the position of the subsequent proprietor, it is nowhere clear in the matter. He asserted that this is

nothing but a vexatious opposition filed by the respondent No. 1 about which he has no seriousness. He asserted that the Registrar has reached the

conclusion of disallowing the application without verifying the claims made by the opponents in its opposition. Thus, the conduct of the Assistant

Registrar in basing his judgment only on the basis of what has been stated in the opposition is not enough. The opponents, even did not choose to file

legal certificate of his Registration. Thus, the findings of the Assistant Registrar in the matter of Section 12(1) are erroneous.

The learned counsel for the appellant referred to certain judgments of the Gujarat High Court and of the Supreme Court in support of his claim. He

referred to the unreported judgment of the High Court of Gujarat in Wockhardt Limited v. Rathison Pharmaceutical Company in Appeal No. 30 of

1993, decided on 6.8.1993. The issue involved in the case was about deceptive similarity of the word mark TROXYTRAN' with the already registered

mark 'PROXYVON'. The Hon'ble High Court, after putting reliance upon the judgment of the Supreme Court in Corn Products Refining Co. v.

Shangrila Food Products Ltd., MANU/SC/0115/1959 : AIR 1960 SC 142 and a few more judgments, reached the conclusion that the words

PROXYTRAN and PROXIVON are dissimilar and there is no reasonable probability of confusion between the two. In Kemp & Company Ltd. v.

Cadila Laboratories Private Limited, decided by the High Court of Gujarat on 9.7.1999, the issue pertained to the similarity of the words

'CAMPICILIN' and 'KEMPISILLIN'. It was argued that the 'KEMPISILLIN' is not deceptively similar to the registered trade mark 'CAMPICILIN'.

The prefix Kemp stands for the name of the proprietor of the mark. The Hon'ble High Court relying upon a cetena of Supreme Court cases and

judgments of various High Courts concluded that the words are similar and observed that it is convenient for the appellant to make change in his name

to Kemp's Kempissillin. The learned counsel for the appellant also put reliance upon MANU/SC/0115/1959 : AIR 1960 SC 142, where the Supreme

Court held that in deciding the question of similarity between the marks, the marks have to be considered as a whole. However, in that case, the

Supreme Court, on examination, found that the marks 'Gluvita' and 'Glucovita' are similar. In conclusion, the learned counsel for the appellant also put

reliance upon the judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Laboratories Ltd., 2001 (21) PTC 541.

It is regretted that respondent No. 1 is very loathe in prosecuting his case. In spite of the notice having been served upon him and his counsel, none

appeared on the date of hearing. However, we have carefully heard the learned counsel for the appellant. We are very much conscious about our

duty to ensure about the purity of register, more so, heavy duty having been cast upon us in relation to entries relating to medicines. The coined word

ASTA"" has two consonants in it and the impugned word ""ASTLER"" has as many as four consonants in it, viz., ""S, T, L and R. The first vowel 'A' in

both words is common. However, the impugned word ""ASTLER"" has an additional letter 'E' as a link between ""L"" and ""R"". The first vowel

'A' in both words though being the same letter of English language gives a different sound in the two words when written in the Indian languages. At

least in Hindi, it shall give a sound of in ASTA and in ASTLER and shall also be written accordingly. These distinctions as described

above make much difference between the words - phonetically and visually. In view of this, we hold that the word ""ASTLER"" is distinctive and does

not cause any confusion or deception in terms of Section 11 of the Act. It accordingly meets the requirements of Section 12(1) also. Consequently the

impugned order of the Registrar of Trade Marks cannot be sustained.

Accordingly, we set aside the impugned order under appeal and allow the appeal with no order as to the cost. The Registrar of Trade Marks is

directed to proceed with the registration of the appellant's trade mark 'ASTLER' in application No. 487853.