Maneesh Pharmaceuticals Limited vs P. Vaikuntam And Ors.

Manmohan Singh, J

The applicant has filed the present application for the removal of registered trade mark No. 1847425 registered in the name of Mr. P. Vaikuntam, 6-4-52, Bholakpur, Musheerabad, Secundrabad - 500 080 (hereinafter referred to as the "Registered Proprietor/Respondent No. 1") in class 5 under section 47, 57,125 of the Trade Marks Act, 1999.

The grounds referred in application are as follows:-

i. The Applicant is one of the fastest growing pharmaceutical company in India since its incorporation in 1985. The Applicant manufactures and markets medicinal preparations for a wide range of ailments including Anti Tuberculosis, Anti Malaria, Gynaecology, Antibiotics, Infertility, Castro Intestinal and Pain Management, in the Indian market through its two marketing arms, Svizera Healthcare and Maneesh Healthcare. Both these divisions together have a strong fleet of over 1,000 medical representatives, aiding more than 2 lakh doctors through a network of 1,500 authorized distributors. The Applicant Is certified by SGS Ltd. (UK) for ISO 9001:2000, and the Applicant ranks in the top 50 manufacturing companies in the Indian market of more than 8,000 companies, 1,50,000 brands and 3,30,000 product packing competing for a share in the $2600 million market. The Applicant has also expanded globally through joint ventures and subsidiaries in more than 70 countries across Africa, South America, Europe, Middle East, and the Asian Continents.

ii. The Applicant is the bona fide lawful proprietor of the registered trade mark "DOXINATE" in respect of medicinal preparation, Doxylamine Succinate and Pyridoxine HCI used for the relief of nausea and vomiting during pregnancy. The trade mark "DOXINATE" was conceived and adopted by one Mr. Dilip S. Cougali of Sigma Laboratories in 1986. On April 7, 1986, Mr. Dilip S. Cougali applied for and obtained the registration of the trademark "DOXINATE", under No. 452122 in Class 5 respect of the aforesaid medicinal preparation. The registration of the mark is valid and subsisting till July 07, 2014. Hereto annexed and marked as Annex A is a copy of the registration certificate issued by the Registrar of Trademarks being Respondent No. 2 in respect of the trademark "DOXINATE". The Applicant has statutory as well as common law right in respect of the trade mark "DOXINATE".

iii. Pursuant to the Deed of Assignment of Trademarks dated May 3, 2005, Mr. Dilip S. Cougali assigned the right, title and interest in the trademark "DOXINATE" to the Applicant and by virtue thereof the Applicant became the proprietor of the registered trademark "DOXINATE". Pursuant to the aforesaid Deed of Assignment of trademarks dated May 3, 2005, the Applicant applied to the Registrar of Trademarks being Respondent No. 2 in Form TM-23 to record its name in the Register of Trade Marks as the subsequent proprietor of the said trade mark under Section 45 of the Trademarks Act, 1999.

iv. The Applicant has been extensively and continuously manufacturing, selling and/or marketing the products bearing trademark "DOXINATE" since the year 2005. The Applicant has been marketing the medicinal preparations bearing the trademark "DOXINATE" in the form of a tablet containing different dosage. Prior to assignment thereof, the trademark "DOXINATE" was extensively used by Mr. Dilip S. Cougali, the original owner of the mark from the year 1986 till it is assigning to the Applicant.

v. The medicinal preparation bearing the trademark "DOXINATE" is highly approved by the regulating authorities and recommended by Gynaecologists. It is categorized by the doctors as trusted, safe and effective. The quality of the medicinal preparation liable to be removed on account of it being phonetically, visually, deceptively and confusingly similar to the Applicant's trademark "DOXINATE".

vi. The medicinal preparation marketed by the Registered Proprietor under the Impugned Mark has identical main ingredients and are for the same treatment as the medicinal preparation of the Applicant sold under the mark "DOXINATE". Due to the similarity between the Applicant's registered trademark and the Impugned Mark, confusion and deception between the medicinal preparations is bound to take place. By using the Impugned Mark, the Registered Proprietor is not only infringing the Applicant's registered trademark but also passing off their preparations as that of the Applicant.

vii. The Applicant is the registered proprietor of the trade mark "DOXINATE" in respect of medicinal preparations in Class 5 under No. 452122. It is therefore submitted that the use of the Impugned Mark "DIXONATE" by the Registered Proprietor's amounts to infringement of the Applicant's registered trademark and passing off the Registered Proprietor's preparations as that of the Applicant. In the circumstances, the Applicants are entitled to an order for removal of the Impugned Mark from the registered trademark records of the Trademarks Registry and the register of trademarks be rectified.

viii. The Applicant further submits that the registration of the Impugned Mark was obtained by the Registered Proprietor by suppressing material facts and circumventing of the provisions of law, therefore, rectification of the impugned mark is necessity the protecting the Applicant's statutory and common law rights.

No Counter-statement has been filed by the respondent No. 1. There is no appearance on its behalf. The ground raised in the petition are unrebutted by the respondent No. 1.

By an order dated 8th October 2012 the Hon'ble High Court of Judicature at Bombay have passed an ad-interim order in terms of Notice of Motion No. 2370 of 2012 in Suit No. 2411 of 2012 and thereby ordered the defendants by themselves, their Directors, officers, employees, servants, agents, agents, successors-in-title, sister concern(s), associates, subsidiary, franchisee, licensee, stockiest, dealers or any other person claiming through or under the defendants jointly and/or severally directed from manufacturing, marketing, selling-the medicinal preparations or any other goods under the impugned trademark "DIXONATE" or any other mark identical with and/or deceptively similar to the Appellant trademark "DOXINATE".

The said order is served on the Respondent as and by way of Affidavit of service dated 22'd October 2012 and the respondent failed to attend the matter and in view thereof the Notice of Motion filed by the Appellant in the Hon'ble High Court at Bombay accordingly disposed of.

The appellant vide notice dated April 28, 2011 called upon the Registered Proprietor to cease and desist to use the Impugned Mark "DIXONATE" on the ground that it is deceptively similar to the trademark "DOXINATE" of the Appellant and in respect of similar goods. The Appellant vide its aforesaid notice also called upon the Registered Proprietor to cease and desist from passing off their goods as the preparations of the Appellant. The Appellant further called upon the Registered Proprietor to withdraw the preparations bearing the said trademark "DIXONATE" from the market. The Appellant came to know about the registration of the Impugned Mark from the reply given by the Registered Proprietor' to said notice of the Appellant. The Appellant was shocked to learn that despite first application of the Registered Proprietor to register the mark "DIXONATE" being under Objection, the second application being abandoned, the Registered Proprietor was granted registration of the Impugned Mark pursuant to the third application.

The Appellant states that the Impugned Mark was granted registration without appreciating the history of the previous applications filed by the Registered Proprietor and its similarity with the registered trademark of the Appellant. It is further submitted that the Registered Proprietor has dishonestly and based on misrepresentation managed to get the Impugned Mark registered which is liable to be removed on account of it being phonetically, visually, deceptively and confusing similar to the Appellant's trademark "DOXINATE".

After hearing, we are of the view that the trade mark of the respondent No. 1 is identical. Due to the similarity between the Appellant's registered trademark and the Impugned Mark, confusion and deception between the medicinal preparations is bound to take place. By using the Impugned Mark, the Registered Proprietor is not only infringing the Appellant's registered trademark but also passing off their preparations as that of the Appellant.

The Appellant is the registered proprietor of the trade mark "DOXINATE" in respect of medicinal preparations in Class 5 under No. 452122. It is therefore submitted that the use of the Impugned Mark "DIXONATE" by the Registered Proprietor's amounts to infringement of the Appellant's registered trademark and passing off the Registered Proprietor's preparations as that of the Appellant. In the circumstances, the Appellant's are entitled to an order for removal of the Impugned Mark from the registered trademark records of the Trademarks Registry and the register of trademarks be rectified.

The registration of the Impugned Mark being contrary to the provisions and the spirit of the Act the Impugned Mark is liable to be removed from the Register in order to maintain the purity the Register.

It appears to us that the registration of the Impugned Mark was obtained by the Registered Proprietor by suppressing facts and in circumvention of the provisions of laws.

In order to maintain purity of the Register, the registered trade mark of the respondent No. 1 being No. 1847425 in class 5 is removed from the register as it is wrongly remaining on the register.

Copy of the order be sent to respondent No. 2 for taking necessary steps of removal.

The petition is disposed of.

No. costs.