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Judgment
S. Usha, J
The original rectification application has been filed for removal of the trade mark ""GLUNIL"" registered under No. 1041324 in class 5 under the
provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The applicant is the registered proprietor of the Trade Mark ""GLUNIL"" under No. 658849 in class 5 dated 15.03.1995 in respect of pharmaceutical
preparations for treatment of diabetes included in class 5. The said trade mark is also registered under No. 717765 in class 5 in respect of goods
namely 'medicinal and pharmaceutical preparations' in the name of M/s Medopharm Remedies and Pharmaceuticals which is the applicant's sister
concern. The above registrations are subsisting and are still in force.
The applicants are well established and reputed manufacturer, marketer and exporter of pharmaceutical and medicinal preparations falling under
class 5 for more than three decades. The applicant's sales turnover in the year 2001-02 has been Rs. 80,22,03,152 and has increased to Rs.
88,15,01,715 in the year 2005-06.
The applicants invented and coined the trade mark GLUNIL from the drug ""glibenclamide"" which is used in the treatment of diabetes. The trade
mark ""GLUNIL"" is invented, coined and non-descriptive. The applicants have been using the trade mark ""GLUNIL"" continuously and extensively
since the year 1989. By long use, the applicants mark has acquired a secondary meaning and has thus acquired valuable goodwill and reputation
among the public. The use of an identical trade mark by others would definitely cause irreparable loss and hardship to the applicant. The impugned
registration is for identical marks in respect of identical goods as that of the applicant and therefore the applicant being the prior adopter is a person
aggrieved and has the locus standi to maintain the application for rectification. The grounds of rectification are: -
(i) the impugned registration has been obtained without any bonafide intention to use the same in relation to the goods for which it is registered;
(ii) the impugned registration is in contravention to the provisions of Sections 9(1)(a), 9(2) (b), 11(1), 11(3)(a), 18(1), 27, 28 and 29 of the Act;
(iii) the entry made in the register is without sufficient cause and is wrongly remaining on the register;
(iv) the impugned registered trade mark is incapable of distinguishing the goods and is devoid of any distinctive character and is in contravention of
Section 9(1) (a) of the Act;
(v) the impugned registered trade mark is identical with that of the applicant's earlier registered trade mark and as such is in contravention of Section
9(2) of the Act;
(vi) the marks being identical, confusion and deception among the public is certain and as such is in contravention of Section 11(1) of the Act;
(vii) the impugned registration is in contravention of the provisions of Section 11(2) of the Act;
(viii) the impugned registration is barred by Section 11(3)(a) and 27 of the Act;
(ix) the impugned registration has been obtained by playing fraud and making false representations under Section 18 of the Act;
(x) the impugned registration is contrary to public interest in maintaining the purity of the Register.
The applicants, therefore, pray that the impugned trade mark registered under No. 1041324 in class 5 be removed from the Register of Trade
Marks.
The Respondent No. 1 were served with the notice of the rectification application as early as 21.09.2007, but they had neither filed their vakalat nor
the counter-statement. The matter was listed for hearing on 10.06.2010 and notice was issued by the Registry of this Board and the same has been
received by the Respondent No. 1 on 30.05.2010. When the matter was called on 10.06.2010, the Respondent No. 1 failed to appear in person or
through their counsel and was, therefore, set ex parte, and the applicants were heard.
Shri Sivaraman Vaidyanathan, learned Counsel for the applicant contended that the impugned trade mark application was filed on 31.08.2001 and
the registration was granted on 30.06.2005. The user claimed by the Respondent No. 1 as on 31.08.2001 was proposed to be used. The mark thus
could not have acquired distinctiveness as there was no use on the date of application and the registration was, therefore, in contravention of the
provisions of section 9 of the Act. The applicant had filed the rectification application as soon as they became aware of the impugned registration.
The applicants established their business as early as 1970 and adopted the trade mark as early as 1989. Their sales turnover runs to several crores
of rupees. The applicant's mark 'GLUNIL"" is identical to that of the impugned trade mark. The applicant's use of the trade mark is from the year 1989
where as the Respondent No. 1 proposes to use the trade mark on the date of application i.e. 31.08.2005.
The applicant drew our attention to annexure D of the typed set of documents filed along with the rectification application and submitted that they
had filed invoices of the year 1992 to prove their use of the trade mark '""GLUNIL"" which was prior to that of the Respondent No. 1. The Respondent
No. 1 though had obtained registration of the impugned trade mark had not put the trade mark to use. The trade mark was, therefore, wrongly
remaining on the Register without sufficient cause and ought to be removed.
We have heard the counsel for the applicant and have gone through the pleadings and documents. In an application for rectification the main issue
is to see whether the applicant is a person aggrieved and whether the applicant has the locus standi to file and maintain the application for rectification.
The Hon'ble Supreme Court in the National Bill Co. (P) Ltd and Anr. v. Metal Goods Mfg. Co. Ltd and Anr. PTC (Suppl.) (1) (SC) 593 has observed
that the expression ""aggrieved person"" has received liberal construction from the courts and includes a person who has, before registration, used the
trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark.
The Supreme Court in another case of Hardie Trading Ltd. v. Addision Paint &Chemicals Ltd. has observed that the locus standi would be
ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to
have such wrong entry removed.
A person who is engaged in the same trade as a registered proprietor and who is likely to be injured or harassed in his trade by the registration
complained of. In the case on hand, the applicant's main contention was that the marks and the goods are identical. There is no doubt regarding the
issue of deception and confusion as the marks and goods are identical. The applicant is prior adopter and user of the trade mark in our view, for the
reason the applicants have produced invoices for the year 1992 though they claim user since the year 1989 whereas the Respondent No. 1 though
failed to appear before us, as seen from the application for registration are subsequent user i.e. from the year 2001 - on the date of application the
mark was proposed to be used. Considering all these facts, we are of the view that the applicant is a person aggrieved.
The impugned trade mark was proposed to be used which, therefore, could not have acquired distinctiveness. The marks being identical and the
goods too are identical the possibility of confusion and deception is certain and not likely. The Supreme Court has also observed that in the case of
medicinal products due care is to be taken to prevent confusion and deception. Confusion in medicinal goods will definitely have serious consequences
for the patients.
The well settled principle of law is that the rights of the prior adopter and user of the trade mark has to be protected. As we did not have the
benefit of hearing the Respondent, on perusal of the records, it is to be taken that the Respondent No. 1 is the subsequent user of the trade mark. The
applicant is the prior adopter and registered proprietor of the trade mark GLUNIL"" which is identical to the impugned trade mark.
The other issue was non-user of the registered trade mark which was wrongly remaining on the Register without sufficient cause. It is also the
admitted case of the applicant that they became aware of the registration in the month of May, 2007 when a search was made in the Trade Marks
Registry. The Respondent No. 1 is not before us either to prove their user or to dispute the plea of non-user by the applicant. It is, therefore, to be
accepted that the Respondent No. 1 though had obtained registration had not put the trade mark to use. The mark is wrongly remaining on the
Register and has to be removed from the Register of Trade Marks.
In view of the above findings, the trade mark ""GLUNIL"" registered under No. 1041324 in class 5 is directed to be removed from the Register of
Trade Marks. The original rectification application is, therefore, allowed with no order as to costs.