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Judgment
S. Usha, J
1 . The instant appeal arises out of the order dated 09.01.2007 passed by the Assistant Registrar of Trade Marks dismissing the opposition No.AMD-
103555 and allowing the application No. 830866 in Class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter
referred to as the Act).
2 . The respondent herein filed an application for registration of the trade mark ""CLAX"" under No. 830866 in Class 5 on 04.12.1998 claiming user
since the same date i.e., 04.12.1998. The said trade mark was advertised before acceptance in the Trade Marks Journal No. 1288 dated 08.02.2003.
The appellant herein filed their notice of opposition objecting to the registration of the trade mark. The appellants stated that they are the prior
registered proprietors of the trade mark ""PLAX"" under No. 480458 in Class 5 which is valid and subsisting. The word ""PLAX"" is registered in various
countries with or without the words Colgate Palmolive. The word ""PLAX"" was registered in India in the name of Oral Research Laboratories Inc.
USA which was assigned to the present appellant. The mark was proposed to be used on the date of application. The appellants started using the
trade mark since 1997 in India. The trade mark ""PLAX"" was well known in respect of mouthwash and dental rinses. The goods though were non-
medicated it falls under Class 5 of the IV Schedule under the Rules. The appellants further stated that the respondents have not given any valid reason
for the adoption of the trade mark ""CLAX"" which is deceptively similar to the appellants trade mark ""PLAX"". The respondent being aware of the
appellants trade mark have dishonestly adopted the trade mark ""CLAX"" for curing dental infections and tooth extraction. ""PLAX"" is an invented word
and there can be no reason for the respondent to adopt a phonetic and visually similar trade mark ""CLAX"" for goods sold from the common counter.
The appellants stated that there would definitely be confusion among the public.
The respondents filed their counter statement stating that the trade mark ""CLAX"" is a coined word and is continuously used since April 1999. The
respondent's goods are tablets and are different from the appellant's goods as mouthwash cannot be confused with the tablets. Mere registration will
not prove the use of the mark in the market. The appellants claim that their trade mark ""PLAX"" is a well known trade mark cannot be accepted. The
respondent's prayer was to consider their application for concurrent registration under Section 12 of the Act, in the alternative.
5 . The Registrar after hearing and considering the arguments of both held that the appellants though claim to have obtained registration but no
document filed to prove use or any confusion caused. The appellants claim use through their predecessors but no evidence filed to show how they
acquired the mark from the original proprietor. The respondent has proved use by filing proper documents. The opposition was therefore dismissed
and the application was directed to proceed for registration.
6 . Being aggrieved by the said order, the appellants have filed this appeal on the ground that the respondents have dishonestly adopted the trade mark
with the intention to trade upon the goodwill earned by the appellant's trade mark. Both the goods are of the same description and the trade channels
are also same. The impugned trade mark is prohibited under Section 12(1) of the Act. The trade marks ""CLAX"" and ""PLAX"" are structurally, visually
and phonetically similar. The use of similar marks are likely to cause confusion and deception in the course of trade and is hence prohibited under
Section 11(a) of the Act. The impugned trade mark is disentitled to protection in a Court of Law and therefore prohibited under Section 11(a) of the
Act. The respondent's adoption is dishonest and therefore cannot claim to be the proprietor under Section 18(1) of the Act. The evidence filed by the
appellants were not considered by the Registrar as it was filed beyond the time.
7 . The respondent herein filed their counter statement stating that the trade mark ""CLAX"" contains enteric coated label containing antibiotics
Ampicillin & Cloxacillin"" with Lactic Acid Bacillus. It is coined from the drug cloxacillin by taking the first two letters 'CL"", fourth letter ""X' and
putting the letter ""A"" in between them. The appellants have failed to establish their right of acquiring the mark from the original proprietor. Sufficient
documents were not filed by the appellants to prove their case. The sales figures are very meagre and there is no proof of use or reputation in India.
Though they claim use since 1997, their products have not been widely advertised and used in India. The other exhibit namely the House Journal does
not give any details as to the sale of the goods and their market share under the trade mark as claimed by the appellant in India. The appellant has
failed to establish their claim of strong presence in India, huge sales in India, a wide reputation and goodwill in India. The trade mark ""CLAX"" is not
structurally, phonetically and visually similar to the appellant's trade mark ""PLAX"". The respondent denied the statement that they had adopted the
trade mark with the full knowledge of the appellant's trade mark ""PLAX"". The respondent's turn over runs to crores of rupees. The appellants are not
the proprietors of the trade mark as they proposed to use the trade mark on the date of application for registration under No. 480458 in Class 5. Till
the year 1997, there was no sales and subsequently the sales figure given is very negligible and does not establish reputation or goodwill. The
appellant's trade mark ""PLAX"" is in respect of mouth wash whereas the respondent's goods bearing the trade mark ""CLAX"" are for treating dental
infections. The respondents denied the various other averments made in the memo of appeal.
8 . We have heard Mr. Rahul Chitnis, Advocate for the appellant and Shri Jatin Y. Trivedi, Advocate for the respondent on 18.11.2011.
9 . The Learned Counsel for the appellant submitted that the marks are PLAX and CLAX which are phonetically similar. The impugned trade mark
was applied on 4.12.1998 claiming user since 4.12.1998 by which the mark could not have acquired distinctiveness. As the marks are similar the
registration would cause confusion among the public. The registration would be in contravention of the provisions of the Act.
In reply, the Learned Counsel for the respondent submitted that they had been using the trade mark CLAX since the year 1998. The appellants
though claim to be using the trade mark since 1994 have not filed any documents in support of the same. The documents have been filed after the
specified period for which no interlocutory petition was filed to take on record those documents. There has been no instance of confusion till date. The
Counsel further submitted that even if the documents are to be considered those documents are of the year 1997 and not earlier. The registration
obtained are all foreign registrations which does not prove use either abroad or in India. The registration under No. 480458 relied on by the appellant
cannot be considered as the registration is in the name of Oral Research Laboratories Inc. The appellant has not given any details as to the proprietor
of the trade mark even in the year 1997. The marks are not similar. The goods are totally different. Even though the appellants claim user since the
year 1997, no evidence filed. The sales figures given is for sale world wide excluding India since the year 1994 which is insignificant. The registration
is therefore not in contravention of the provisions of the Act.
We have heard and considered the arguments of both the Counsel and have gone through the pleadings and arguments. The marks namely PLAX
and CLAX are not similar in our opinion. The goods for which the trade marks are used are different. The appellant's goods are chewing gum and
lozenges for medical purposes, dental preparations (medical), Denture cleaners, Denture (additives). The respondent's goods are antibiotics for curing
dental infections and tooth extraction.
The appellants claim use since 1987 based on the registration of their mark PLAX as of 02.11.1987 which was proposed to be used on that day.
The documents filed as evidence prove user only from the year 1997 whereas in their pleadings they claim user since 1964 outside India and since
1994 in India. No doubt they have given a list of registrations, but the same will not prove the use.
Further the registration No. 480458 relied on by the appellants for use of the trade mark ""PLAX"" is not clear. On perusal of the certificate the
name of the proprietor is Oral Research Laboratories and the date of the application is 02.11.1987 which is proposed to be used on that date. There is
nothing placed before us to show that the mark was used since 1994 as claimed in their pleadings. As already stated above, the 1st document i.e., Bill
is dated 1997 and not earlier to that. There is nothing to show that Oral Research Laboratories Inc. has assigned the trade mark to Pfizer Inc. USA.
1 4 . The issue of confusion and deception does not arise in this case in our considered opinion. Both the products are sold from the same counter no
doubt. But the chemists will not be confused or mistake one for the other.
The appellant has not proved their case. We therefore do not find any reason to interfere in the impugned order. The appeal
OA/28/2007/TM/AMD is dismissed allowing the application No. 830866 in Class 5 to proceed to registration. No order as to costs.