Population Health Services (India) vs Registrar Of Trademarks

Manmohan Singh, J

The present appeal is filed under Section 91 of the Trade Marks Act, 1999 against the order passed by the Respondent on 20 March 2018 and the Statement of Grounds of Decision dated 20 August 2018. Vide the aforementioned order and Statement of Grounds, the Respondent refused registration to the Appellant's trade mark under Application No. 2381340 dated 17 August 2012 in class-05.

The brief facts and relevant dates as supplied by the counsel for the appellant leading to the order dated 20 March 2018 and the detailed Statement of Grounds of Decision dated 20 August 2018 passed by the Respondent are outlined below:

It is stated on behalf of appellant that on 30th November, 2018, a notice was issued by this Board whereby, the Respondent was called upon to file a Counter affidavit. The said notice was issued to the Respondent under cover of official letter dated 09 January 2019, however, no counter-affidavit has been filed. The appellant was established in the year 1999 with the objective of providing and improving access to high quality and affordable sexual and reproductive health care products & services. The Appellant is a not-for-profit nongovernmental organization headquartered in Hyderabad and affiliated to Marie Stopes International, UK. The prime objective of the Appellant is to provide high quality family planning & reproductive health care services to the community specially emphasizing on underserved and vulnerable groups. In 2014, the Appellant's work helped to avert over 4,100,000 contraception users and prevented 957,000 unsafe abortions and produced over 4 Million couple years of protection

(CYPs) with an increase of 767,000 unintended pregnancies averted in 2014. Relevant extracts from the Appellant's website have been filed. The Appellant has been manufacturing products bearing the trade marks containing "EVRON".

The Appellant is the registered proprietor of the following trade marks in India:

(a) EVRON L under No. 1717936 dated 05 August 2008 in class 05; and

(b) EVRON DESO under No. 1964691 dated 13 May 2010 in class 05.

Both these registered trade marks are valid and subsisting on the Register of Trade Marks in India. Copy of the TM-1 as filed along with the Additional Representation and extracts from thee-register for Registration No. 1717936(EVRON-L) are attached with the appeal. Extracts from the e-register for Registration No. 1964691 (EVRON DESO) along with a copy of the Registration Certificate of the said trade mark are also filed.

The intimation given to the Appellant by the Respondent on 20 March 2018 states that registration has been refused under Sections 9 and 11 of The Trade Marks Act, 1999.

It is submitted on behalf of appellant that a bare perusal of the impugned order dated 20 March 2018 and the Statement of Grounds dated 20 August 2018 do not explicitly state if the application was rejected under sub-sections (1), (2) or (3) of Section 11 of The Trade Marks Act 1999. It merely indicates that since the objection raised in the Examination Report under Section 11 of The Trade Marks Act, 1999, the same cannot be waived. The application filed by the Appellant is refused. The impugned order and the Statement of Grounds do not indicate why t he objection raised under Section 11 of The Trade Marks Act, 1999 cannot be waived. It also does not explain how the Respondent came to the conclusion that the Appellant's trade mark attracts the prohibition envisaged under Section 11 of the Act. There were four marks cited in the examination report. The Respondent has failed to explain if all the four cited marks or any one or more of the four cited marks is/are an impediment to the registration of the trade mark . The Respondent has also failed to assign any reason how the application was rejected under sub-sections (2) or (3) of Section 11. Reliance is placed on the decision passed by the Hon'ble Madras High Court in Eco Lean Research and Development A/S Vs. Intellectual Property Appellate Board 2011 (48) PTC 202 : 2011 (5) RAJ 483 (Mad)] wherein it was held that,

Though in the order passed by the second respondent, section 11 (1) of the Act has been extracted, yet, in the operative portion of the decision it has not been explicitly stated as to whether the application was rejected under sub-section (1) or (2) of Section 11 of the Act. If the application was rejected under sub-section (2) of section 11 then such rejection could have been made only after the objections of any one or more of the grounds is raised in the opposition proceedings by the proprietor of a trade mark, which could be done only after the trade mark is advertised in terms of sub-section 5 of section 11.

It is submitted on behalf of appellant that the Respondent has relied on the following decisions in refusing the Appellant's trade mark in class-05 as revealed in the Statement of Grounds:

- Sap Se & Ors. vs. Sap Edge;

- Icon Health and Fitness vs. Sheriff & Anr.;

- Verizon Trademark Services LLC vs. Vijay Patel; and

- Skipper Limited vs. Akash Bansal & Ors.

It is also submitted that the Respondent has failed to give any valid reason as to how the above-mentioned cases are applicable to the facts of the present case. The Respondent failed to appreciate that the facts of the above-mentioned cases are different and cannot be applied to the present case.

The Respondent cited 4 marks in the examination report because of its alleged similarity with the Appellant's trade mark . The cited marks contain or consist of the marks 'EVRON' and 'EVERON'. The Respondent failed to consider the fact that out of the four (04) cited marks, the earliest, valid and renewed registration for EVRON belongs to the Appellant under registration No. 1717936 (trade mark EVRON-L) dated 05 August 2008. The Respondent failed to appreciate the fact that the Appellant's own registration could not be an impediment to the registration of the present trade mark . To the contrary, the Appellant's earlier registration No. 1717936 ought to help the registration of the present trade mark as it establishes prior and honest adoption of the trade mark 'EVRON' by the Appellant.

The Respondent did not consider the fact that out of the remaining three (03) marks cited as conflict in the examination report dated 17 May 2013, the following two (02) marks were not relevant for the reasons outlined below:

• Registration No. 426714 dated 05 September 1984 for the mark EVERON has not been renewed till date since it first fell due for renewal and deserves to be expunged from the Register. Relevant extract from the e-register maintained by the Respondent has been filed along with the appeal (see page 115 paper book) and an additional extract from the e-register is being filed herewith. An Application was filed on 10 February 2020 for obtaining information under The Right to Information Act, 2005, in relation to Registration No. 426714.

However, no reply was received.

• Application No. 2046553 dated 29 October 2010 for the mark stands abandoned. Relevant extract from the e-register maintained by the Respondent has been filed.

The impugned order and the Statement of Grounds do not have any finding on the above and completely ignores these essential and pertinent facts.

The Respondent also failed to consider the fact that amongst all the marks cited in the examination report, the only valid and subsisting mark in the name of an entity other than the Appellant was Registration No. 2276318 dated 02 February 2012 in class 5 for the mark EVERON in the name of Agron India Limited. The Respondent failed to appreciate the fact that since the Appellant is the prior registered proprietor of the trade marks EVRON L under registration No. 1717936 dated 05 August 2008 and EVRON DESO under No. 1964691 dated 13 May 2010, the alleged registration No. 2276318 dated 02 February 2012 in the name of Agron India Limited could not be an impediment to the registration of the trade mark in favour of the Appellant. The Respondent overlooked the fact that the Appellant's mark EVRON L under registration No. 1717936 found a mention on the examination report dated 17 May 2013.

Market survey to check availability of product bearing the mark EVRON belonging to Agron India Limited:

As suggested by this Tribunal, the Appellant conducted a market survey under the trade mark EVERON. It was revealed during the market search that Agron India Limited is not manufacturing or selling any medicinal, pharmaceutical or ayurvedic preparations or substances included under the trade mark EVERON. An affidavit from the investigator, deposing the afore-mentioned fact is filed.

The Respondent failed to understand the true import of Section 11 of The Trade Marks Act, 1999 and raised the said objection without any

basis. Section 11(1) of The Trade Marks Act, 1999 provides that a trade mark shall not be registered if, because of

- its identity with an earlier trade mark and similarity of goods/services covered by the trade mark; or

- its similarity to an earlier trade mark and the identity/similarity of the goods/services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

The expression "earlier trade mark" has been used in Section 11(1) of the Act. Further, 'earlier trade mark' as defined under the Act [explanation under Section 11 (4)] includes a registered trade mark bearing an earlier date of filing.

It is a fact on record that the Appellant is the registered proprietor of the trade mark EVRON L under registration No. 1717936 dated 5 August 2008 and EVRON DESO under registration No. 1964691 dated 13 May 2010. The said registrations in favour of the Appellant are 'earlier trade marks' as defined under the Act when compared with the cited mark EVERON under registration No. 2276318 dated 02 February 2012. From a plain reading of the impugned order and the Statement of Grounds of Decision it is evident that the Respondent has not considered the above while refusing registration to the Appellant's trade mark . Therefore, the Respondent erred in refusing the present application under Section 11(1) of The Trade Marks Act, 1999.

The trade mark EVERON was applied for registration by Agron India Limited on 02 February 2012 on a 'proposed to be used basis. The Respondent failed to consider that the Appellant had already coined the trade mark EVRON and had secured registration for the trade marks EVRON-L dated 05 August 2008 under No. 1717936 and EVRON DESO dated 13 May 2010 under No. 1964691.

It is a matter of fact that the Respondent granted registration to the trade mark EVERON (under No. 2276318) when earlier registered trade marks EVRON L (under No. 1717936) and EVRON DESO (under No. 1964691) of the Appellant were subsisting on the Register of Trade Marks in India. Therefore, using the same yardstick, the Respondent ought not to have refused registration to the trade mark of the Appellant. The Respondent has also erred in examining the subject trade mark . The Appellant's trade mark EVRON DESO under1964691 dated 13 May 2010 ought to have found a mention in the search report attached to the Examination Report dated 17 May 2013 issued towards the Appellant's trade mark under Application No. 2381340. In the impugned order as well as the Statement of Grounds of Decision, not only has the Respondent ignored the Appellant's prior rights in the registered trade mark EVRON L under No. 1717936 which appears in the Examination Report dated 17 May 2013, but the Respondent has also not mentioned the Appellant's prior registered trade mark EVRON DESO under 1964691 in the Examination Report.

Reliance is placed on the decision passed by the Intellectual Property Appellate Board in Jahangir Biri Factory Pvt. Ltd. vs. Mohd. Dildar Hossain

(Proprietor) and Ors. 2018(76) PTC 479 (IPAB)] wherein it was held that:-

It is clear that there is a lapse on the part of the respondent No. 2 in Examiner Report. We failed to understand why the registered trade mark and pending applications have been ignored by the respondent No. 2. Had the said trademarks and pending applications of the applicant been referred in the Examiner Report, the application of the respondent No. 1 ought not to have been allowed. Despite of grave lapse on the part of respondent No. 2, the application of the respondent No. 1 was proceeded further and the same was registered. The respondent No. 2 has even after acceptance of mark (if wrongly) has got the power to withdraw the acceptance in case of an error in view of the mandatory provision of section 19 of the Act, the said provision is read as under: ……………

From the above, it is clear to us that the present case, evidently there is violation of provisions of trademark act and rules in granting the registration of trademark HOWRAH BIRI 202 under No. 1760000 to the Respondent was not proper. The mandatory provision the Act and Rules cannot be ignored by the respondents. It is clarify that in the present order, we are not deciding the issue of ownership of the mark in favour of either party. In petition is being decided purely on the basis of a valid objection, taken by the respondent No. 1 therefore, we are deciding the same.

The objecti on under Section 9 of The Trade Marks Act, 1999 was not raised in the examination report dated 17 May 2013. It was also not raised during the hearing held on 20 March 2018. It was raised, for the first time, in the impugned order dated 20 March 2018. The refusal is set aside and the objection under Section-9 is waived. The impugned order and the Statement of Grounds do not indicate how the trade mark in relation to products under class 05 attract the prohibition envisaged under Section 9(1), (2) or (3) of The Trade Marks Act, 1999.

In the light of above, the impugned order dated 20 March 2018 and Statement of Grounds dated 20 August 2018 is set-aside.

It appears to us that both the orders were passed mechanically and without application of mind. It is the duty of the Examiner to examine the earlier record carefully before issuing the Examiner Report. It is also the duty of the respondent to consider the reply to the Examiner Report before refusing the application. The respondent must understand that valuable rights of each party are involved.

In the light of above, the impugned orders are set-aside. The appeal is allowed. The application of the appellant is accepted for registration and shall be proceeded for registration as per rules. The respondent is burdened with costs of Rs. 20,000/- (Rupees twenty thousand only) which shall be deposited with the 'PM Care Funds' within four weeks.

No costs.