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Judgment
Syed Obaidur Rahaman, Technical Member
The above appeal is filed by the appellant against the order passed by the Deputy Registrar of Trade Marks, Kolkata on 15th January, 2007
whereby the Opposition No. KOL-202308 is disallowed and Application No. 1227524 in class 5 ordered to proceed for registration subject to
specification of goods to read as ""Medicinal preparation containing vitamins for sale in the State of West Bengal only"" and miscellaneous application is
filed seeking the stay of impugned order.
2 . The facts of the case is that the appellant is a company incorporated under the Companies Act, 1956 carrying on a leading and well established
business as manufacturers, dealers, exporters and importers of a wide range of pharmaceutical and medicinal preparations and substances, bulk drugs,
etc. sold under several well known and distinctive trade marks. One such trade mark is IVIT/I-VIT which was adopted by the appellant's
predecessors in business in the year 1993 for use in relation to medicinal and pharmaceutical preparations and the same has been used continuously,
extensively and previously by its predecessor.
The respondent applied for the trade mark J-VIT on 28th August, 2003 by Mahuya Banerjee trading as Jayashree Pharmaceuticals. The application
was advertised before acceptance under the provisions of Section 20(1) proviso of the Trade Marks Act, 1999 in the Trade Marks Journal No. 1328
Suppl. (3) dated 21st February, 2005 at page No. 497.
4 . The appellant raised an objection against the registration of the mark J-VIT and filed a Notice of Opposition of the said mark under Sections 9(1)
(a), 9(2) (a), 11(1), 11(2)(a), 11(3)(a), 11(10), 18(1) and 18(4) of the Trade Marks Act, 1999 being proprietor of the similar mark IVIT/I-VIT which
mark is in use by the appellant and its predecessor for the past several years.
The appellant has been carrying on the business activity for several years and has become a well known name with the trade and public in or about
the year 1993; used the said trade mark IVIT/I-VIT in relation to medicinal and pharmaceutical preparations manufactured by them. Thereafter, the
said trade mark came to be transferred to the appellant vide Deed of Assignment dated 25th March 1996. The appellant used the trade mark openly,
extensively, continuously and uninterruptedly since several years on an extensive scale.
6 . As such in the mind of the medial fraternity, trade and public, the trade mark is associated exclusively with the predecessor of the appellant and
after the assignment with the merchandise of the appellant and none other. The medicinal preparations bearing the said marks are bought and sold as
the quality goods originating from the appellant only.
7 . After hearing the submissions and arguments of the parties, the Learned Deputy Registrar of Trade Marks, passed an order and disallowed the
opposition and allowed the application subject to sale of goods in the State of West Bengal only.
The miscellaneous petition came up for hearing before the Circuit Bench Sitting at Kolkata on 5th March 2009, Shri Anjan Sen, Advocate appeared
for the appellant and Shri Sushanta Ghosh, Advocate appeared for the respondent No. 2.
9 . Learned Counsel for the appellant submitted that the mark J-VIT is deceptively similar to the mark of the respondent No. 2's IVIT/I-VIT. The
mark IVIT/I-VIT is a well known mark since 1996 and the counsel for the appellant referred and relied upon the Order No. 75/2002 passed by this
Appellate Board to the extend that registered trade mark is directed not to issue certificate of registration to the first respondent until further
directions. However, the Registrar of Trade Marks may proceed with regard to completion of other statutory requirements of registration.
Learned Counsel for the appellant lastly prayed that interim order may be passed to stay the order of Deputy Registrar of Trade Marks.
Shri Sushant Ghosh, counsel for the respondent No. 2 submits that the Supreme Court has already decided that the VIT being used to denote
Vitamins"" in the case of 196(2) Scc 716 - F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. The word VIT is a common and
generic word for Vitamin and it can be used everybody.
Counsel for the respondent relied upon the following judgments:
(i) 1969 (2) Supreme Court Cases 716 - F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. - It was held that the terminal
syllable 'VIT' in the two marks is both descriptive and common in the trade. The pronunciation of D and P is wholly dissimilar to that of P and T, with
no reasonable probability of confusion from the visual or phonetic point of view.
The various trade marks with 'VIT' as suffix, even an average customer can know that in respect of vitamin preparation, the word 'VIT' occurs in a
large number of trade marks and as such he can keep himself on guard against making any mistake.
Taking into consideration all the circumstances of the case, there appears to be no real tangible danger of confusion.
If 'Dropovit' is not a descriptive word, it must be held to be an invented word. It is carried out of two words, the resulting combination not reminding
one of the original words unless he is told about it or he devotes some thought over it. It being an invented word was entitled to be registered as a
trade mark.
(ii) AIR 1998 Delhi 126 - S.B.I. Limited v. Himalaya Drug Co. - It was held that the trade mark Liv 52 and Liv T are not phonetically and visually
similar. No question of deceptively similar Liv prefix use for Liver tonic.
(iii) 2002 CLC 1163 Delhi High Court Â- Dr. Reckeweg & Co. GMBH and Anr. v. Wellmans Homoeopathic Laboratories Ltd. - It was held that the
plaintiff has brought to the notice of the Court that the literature drafted by the defendant is basically copied. It is literary work. Even spelling mistakes
have been repeated. To that effect indeed the plaintiff is entitled to temporary injunction.
Learned Counsel for the respondent No. 2 submits that both mark are different, there is no question of deceptive similarity of mark IVIT/I-VIT is
used for human body and JVIT is also vitamin, there is no confusion of deception similarity.
After hearing both the parties, and as per observation of the Supreme Court in F. Hoffmann-La Roche & Co. Ltd.'s case (supra), we are of the
view that it is a settled law that the VIT is generic word and is used for vitamin. So there is no confusing between IVIT/I-VIT and JVIT. We are
prima facie satisfied that the mark is different and there is no visual and phonetical similarity and no likelihood of confusion or deception. Both marks
are used in the field of medicinal business/trade, there is no confusion and deception among the trader and general buyer. It is also observed that the
mark IVIT/I-VIT and JVIT is different. Nobody can be mislead. The marks are no deceptively similar.
After going through record and case laws, we are inclined to grant injunction up to the next date of hearing of main appeal. The Registrar of Trade
Marks, Kolkata is directed not to issue the certificate of registration until further order of this Appellate Board. However, the Registrar of Trade
Marks may proceed with regard to completion of other statutory requirements of registration.
The petition is ordered in the above terms.