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Judgment
S. Usha, J
Appeal arising out of the order dated 24.3.2009 passed by the Deputy Registrar of Trade Marks allowing the opposition No.AMD-185126 and
refusing the application No. 1159172 in Class 5 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to
as the 'Act'). The appellant filed an application under No. 1159172 in Class 5 on 17.12.2002 claiming user since 20.9.2002. The said application was
advertised in the Trade Marks Journal No. 1320 dated 1.6.2004 at page No. 1926. This was made available to the public on 19.10.2004. The notice of
opposition was on various grounds like the registration would be in contravention of Sections 9(1)(a), 9(2)(a), 11(1)(a), 11(1)(b), 11(2)(a) & (b), 12 and
18(1) of the Act. The opposition was also based on the ground that the opponents were already the registered proprietors of the trade mark VISCO.
The impugned mark namely VISCOF-DP is similar to their registered trade mark which would definitely cause confusion among the consuming
public.
The applicant filed their counter statement before the Trade Marks Registrar stating that the marks were totally different and the possibility of
confusion was too remote and that the mark may be accepted for registration.
3 . The Deputy Registrar heard the matter and held that the opponent's objection under Section 9 was sustainable and the applicant failed to produce
any evidence to support their claim of use in Class 5 goods and as such had not satisfied the distinctiveness of the mark. The overall similarity of the
rival marks if looked into would definitely mislead a person who is not dealing with medicinal goods and therefore the confusion was inevitable and
therefore the objection under Section 11 of the Act was sustained. The objection under Section 18(1) of the Act was based on the ground that the
opponents are the registered proprietors of the trade mark VISCO and therefore the applicant's adoption was not honest and they cannot be the
proprietors of the trade mark VISCOF-DP. There was no proof filed by the applicant to place on record that they had conducted the market survey
and found no identical/similar marks available in the market. The Registrar therefore held that the opposition be allowed and the applicant be refused
registration. Aggrieved by the said order, the appellant filed the appeal.
We have heard Shri Akshay Vakil, Counsel for the appellant and Shri Harshil Shah, Counsel for the respondent.
5 . The learned Counsel for the appellant submitted that the application for registration of the impugned trade mark was filed on 17.12.2002 claiming
user since 20.09.2002 and by a short period of time the appellant's mark had acquired goodwill and reputation among the trade and public. The trade
mark is VISCOF DP. The opponents/respondents trade mark is visco.
6 . The Counsel then submitted that the Registrar's finding that the trade mark registration would be against the provisions of Sections 11 and 18 of the
Act was not valid and legal. The Counsel submitted the rivals marks were totally different and there was no possibility of confusion and deception.
The Counsel then relied on the judgment reported in 2004 (29) PTC 488 (IPAB) - Sandoz Limited, Appellant Vs. Hico Products & Ors., Respondents
and submitted that the marks in that case were ""DERMASOFT"" and ""DERMAGEN"" where it was held that the suffix words takes a lea in finding the
distinctiveness and that the words ""SOFT"" and ""GEN"" can be neither visually same nor phonetically identical.
7 . The learned Counsel for the respondents submitted that there is no evidence of their use. The adoption is dishonest. They do not satisfy the
provisions of Section 12 of the Act. Though the appellants claim user since 2002 there is no proof of use whereas the respondents have been using the
trade mark ""VISCO"" since the year 1987. The letters ""DP"" in the trade mark ""VISCOF DP"" is disclaimed and therefore the additional letters cannot
be considered.
The Counsel relied on few judgments in support of their case -
(i) 2012 (49) PTC 485 (IPAB) - Manish Masala Food Products, Applicants Vs. Radha Sarveshwar & Co. & Ors., Respondents - This is a case of
rectification. In this case, the registration was cancelled as the proprietor had obtained registration by stating false date of user. In the case on hand,
the application was made claiming user since 2002 whereas in the affidavit of user filed before the Registrar at the acceptance stage, the appellant
has claimed user since 2000 and sales figure for that period has been given which is a misstatement.
(ii) 2007 (34) PTC 151 (IPAB) - Baroda Pharma Pvt. Ltd., Appellant Vs. Zeneca Limited & Others., Respondents and
(iii) TA/51/2003/TM/MUM (M.P. No. 23 of 1990) (IPAB) - The Himalaya Drug Company, Appellant Vs. Lalitkumar Ratilal Fozdar & Ors.
Respondents These were relied on for the submission that though the suffix is different, the possibility of confusion was likely to occur. Especially in
medicinal products more care is to be taken to decide the issue of similarity.
(iv) 2002 (25) PTC 398 (Guj) (DB) - Pravinbhai Jagjivandas Mehta, Petitioner Vs. Officine Lovato S.P.A., Respondent When the discretion has been
shown to have been exercised arbitrarily the appellate Court ought not to interfere.
(v) 2008 (36) PTC 478 (Bom) - Wyeth Holdings Corporation & Anr., Plaintiffs Vs. Burnet Pharmaceuticals (Pvt.) Ltd., Defendant and
(vi) PTC (Suppl.) (2) 656(Mad) - Hindustan Lever Limited, Appellant Vs. Radha Products, Respondent
In order to decide the issue of deceptive similarity the marks have to be compared as a whole.
We have considered the arguments of both the Counsel.
1 0 . The main issue that arises for consideration is that whether the marks are similar. The goods being medicinal products more care is to be taken to
decide the same. In the case on hand the marks are VISCO & VISCOF DP. The appellant's goods are for treatment of cough whereas the
respondent's goods are for treatment of gastric acidity. The ailments are different. If one is taken for the other it would definitely cause bad effects. It
has been held by various Courts that if by wrong pronounciation one consumes a medicine for the other then the injury is serious which cannot be
compensated in terms of money.
The marks VISCO & VISCOF, if the letter ""F"" is slurred that would be ""VISCO"". I it is prescribed and the VISCO is written by a physician just
by a line stretched then it would be read as VISCOF. Normally customers go by the prescription and purchase medicines. There is every possibility of
confusion being caused.
In an application for registration the onus is on the applicant to prove that the mark deserves to be registered. The appellant has failed to prove the
same. The registration of the trade mark therefore has to be rejected under Section 11 of the Act.
There is no dispute as to the use of the mark by the respondents since the year 1987. The appellants though claim use since 2002, in the
application for registration they have given sales figures since 2000-2001 which is a contradictory statement. Even assuming the appellants had been
using since the year 2000, the respondents are senior in use. Having given all the findings in favour of the respondents, we do not think it proper to
interfere in the impugned order. Accordingly, the appeal OA/46/2009/TM/AMD is dismissed with no order as to costs.