Candia Formerly Known As Candia, S.A. vs Glenmark Pharmaceuticals Ltd. And The Deputy Registrar Of Trade Marks

Syed Obaidur Rahaman, Technical Member

This miscellaneous petition is filed by the appellant/applicant for stay of the order dated 27.06.2007 passed by the Deputy Registrar of Trade

Marks. Kolkata.

The facts of the case is that the word 'CANDIA' was sought for registration under application No. 826084 dated 05.11.1998 in Class-5 by the

appellant/applicant in respect of dietetic substances, food for babies. The mark was proposed to be used on the date of application. A notice of opposition dated 17.01.2006 on Form TM-5 was lodged by the respondent No. 1 which were the opponents before the Registrar objecting to the registration of the mark of the appellant/applicant. The Deputy Registrar of Trade Marks allowed the opposition and rejected the application for

registration. The respondent No. 1 are leading pharmaceutical company dealing in dermatology, diabetes and internal medicine and are doing business in 40 countries all over the world and are registered proprietors of several trade marks. The respondent No. 1 are also registered proprietors of the mark 'CANDID' adopted some time in the year 1978. The appellant is the registered proprietor of the trade mark 'CANDIA' proposed to be used in

India in class 5. They are a reputed company in France in the business of manufacturing and sale of milk and milk products and derived their trade mark from their trade name since the year 1971. The appellant also claimed that the word 'CANDIA' is registered in more than 50 countries including

India in other classes.

3 . The matter came up for hearing at the Circuit Bench at Kolkata on 04.03.2009. Mrs. Moushumi Bhattacharya, learned Counsel appeared on behalf of the appellant and Shri Anil Shunglu appeared on behalf of the respondent No. 1.

4 . Learned Counsel for the appellant/applicant submitted that the appellant's mark CANDIA is registered in 55 counties all over the world and it is a very reputed mark for dietetic substances and food for babies. The mark is not deceptively similar to the respondent No. 1's mark CANDID. The mark CANDID is used for treatment o ailments of fungal infections which is a medicinal preparation. Both the marks are for different goods i.e.

respondent No. 1's mark CANDID is for treatment of disease and the appellant's mark CANDIA for dietetic substances and foods for babies. The mark of the appellant is a well known mark in more than 50 countries. Hence the impugned order passed by the Deputy Registrar may be stayed.

5 . On the other hand the learned Counsel appearing for the respondent No. 1 submitted that their mark CANDID is used for medicinal preparation for fungal ailments in more than 40 countries all over the world. The applicant/appellant's trade mark is deceptively similar with the mark of respondent No. 1. The mark CANDID of respondent No. 1 is used since 1978. On account of its extensive use and due to the vast publicity this mark is very popular all over the world. The sales figure Rs. 66,73,93,000/- a certificate issued by the Charted Accountant, which is annexed with the counter statement indicate the extensive use and its reputation. Xerox copies of Registration certificates and Xerox copies of renewal certificates are annexed in respect of the trade mark CANDID at pages 38 to 75 of the counter statement.

6 . After hearing both the parties, we are of the view that as both the marks has trans-border reputations in various countries and both are well known trade mark all over the world and the marks are not deceptively similar. One is used for babies food and the other used for medicinal preparation.

After giving our considered thought to the possible pros and cons of the case, we are of the view that prima facie there is no likelihood of causing any deception or confusion in the minds of consumers and trade. The applicant filed the Xerox copies of registration and renewal certificates at page No.

284 to 373. It is indicated from the registration certificates and renewal certificates that the applicant's mark is well known mark all over the world and this mark was earlier registered in India. For the above reasons we are of the opinion that by passing an order of stay of the operation of the impugned order dated 27.06.2007 will not prejudice the respondent No. 1 as it can still use the mark under the common law whereas if stay is refused and registration certificate is issued by the Registrar during the pendency of the appeal, it would cause hardship to the appellant. The balance of convenience is, therefore, in favour of the appellant. The appellant has also established the prima facie case for issuance of stay prayed for by them.

7 . In view of the above, the operation of the impugned order dated 27.06.2007 is stayed till the next date of hearing. The stay application is disposed of on the above terms without any order as to costs.