Lupin Limited vs Bentley & Remington Pvt. Limited And The Deputy Registrar of Trade Marks

Prabha Sridevan, J

This petition is for restoration of the M.P. No. 229/2011 in OA/15/2009. The above appeal was filed by the petitioner herein against the order

passed by the Registrar in Opposition No. MAS-2262 filed by the appellant herein. The respondent had applied for the registration of the mark ICIN

for medicinal and pharmaceutical preparations in Class 5. The appellant who is proprietor of the trade mark R-CIN opposed the registration under

several grounds. The Registrar was pleased to hold that the opponents had not established their case and disallowed the opposition. The mark was

ordered to be registered. The appeal was listed on 29.06.2011. On that date, the counsel for appellant appeared before us. But the notice sent to the

respondent had returned unserved. We adjourned the matter to 12.07.2011 and the appellant was asked to ascertain the correct address of the

respondent and to file it or to inform the Registry. The adjourned date of hearing was fixed in the presence of the Counsel for the appellant. When the

matter came up on 12.07.2011, there was no appearance on behalf of either parties and we adjourned it to 12.09.2011. On 12.09.2011 again there was

no representation from either side. The appeal was dismissed for default.

The order copy had been communicated to the appellant by the Registry on 20.09.2011. This was received by them. They then filed M.P. No.

229/2011 for restoring the appeal that was dismissed for default. On 09.12.2011, M.P. 229/2011 was listed. The Counsel for the appellant had been

intimated that it would be listed on that date. But no one appeared. The order sheet shows that we waited till 4.45 p.m., there was no representative

on behalf of either side. So the MP for restoration was dismissed for default. Now the present M.P. No. 1/2013 has been filed for restoring that M.P.

229/2011.

The learned counsel for the petitioners submitted that it was because there was shifting of the office that the papers had been misplaced and there

was no deliberate negligence on the part of the petitioner. He prayed that some indulgence should be shown in this regard. According to the learned

counsel, there was no user of the mark by the respondent and their mark R-CIN had been used from 1978. The learned counsel submitted that the

decision of the Hon'ble Supreme Court in ""Cadila Health Care Limited Vs. Cadila Pharmaceutical Ltd."" 2001 (PTC) SCC 541 would squarely apply to

this case where both the marks relate to medicinal & pharmaceutical preparations.

The learned counsel appearing for the respondent submitted that the reasons given for their absence on all the dates cannot be accepted. In the

pharmaceutical industry, there are several marks which have the suffix 'CIN'. The respondent mark had been on the register from 1986 at least for

more than 20 years. There is no instance of confusion and therefore, there was no merit in the appeal.

Even as early as in the month of June, 2011 this Board communicated on its website that whenever the matter is listed, the counsel or the party

must be present and if they are not present, it is their duty to ascertain the adjourned date, and that the repeated communications indicating the dates

of hearing would not be sent to parties who stay away from appearing before us though they know the adjourned date.

In this case, the counsel for the appellant was present before us on 29.06.2011. It was in her presence that we fixed the next date of hearing i.e. on

12.07.2011. On 12.07.2011, there was no appearance and we adjourned it to 12.09.2011. Even if the appellant had some unavoidable cause for not

appearing on 12.07.2011, they should have ascertained from the Registry regarding the next date of hearing or found out what transpired on

12.7.2011. Whatever it may be there was no appearance on behalf of the appellant on 12.09.2011. After the dismissal order was passed, they filed the

restoration application. The matter again ended with just filing the application. Again on the date of hearing, they did not appear. And therefore, it was

also dismissed for default.

We see no reason why we should show indulgence in this case where there has been a continuous absence. However, since the Trade Marks Act is

also concerned with maintaining the purity of the Register, we heard the learned counsel for the appellant on the merits also to see if there was any

justification in public interest for us to hear the matter.

We see from the Impugned Order that the Registrar has referred to the invoices filed by the respondent to show sales of ICIN from 1985 though

the respondent's claim is only from 1986. The Registrar had satisfied himself regarding the user by the respondent. Even as regards confusion and

deceptive similarity, the Registrar has held that the goods relate to different medical preparations and when the marks are compared as a whole,

testing them by the decision in 'Pianotist' case, there was no action for deceptive similarity. The Registrar had observed that in the case of medicinal

preparations, the tribunal has to be careful and cautious and have arrived at the decisions. We do not see any error in the approach of the Registrar

for us to interfere in spite of the fact that the appellant on three occasions not appeared before us. We have gone into the merit of the matters only on

the instance of the repeated submissions made by the counsel for the appellant.

We see no sufficient cause to allow the MP for the reasons explained above. M.P. No. 01/2013 is dismissed with no costs.