Torrent Pharmaceuticals Limited vs Reddy's Laboratories Limited And Assistant Registrar Of Trade Marks

Raghbir Singh, J

1 . Appeal No. 2/1999 was filed in the High Court of Gujarat at Ahmedabad on 3.5.1999 and the same was transferred to this Board in terms of

Section 100 of the Trade Marks Act, 1999.

2 . The appellant herein above filed an application being application No. 495387 in class 05 for registration of a trade mark 'DOPAMINE' word per se

on 4.8.1988. The user claim of the mark was since 20.12.1985. The mark in due course was advertised in Trade Marks Journal No. 1094, dated

1.1.1995 at page 1375. The first respondent herein above gave the notice of opposition on the grounds that the opponents and their predecessors are

the proprietors of the mark 'DOPAMET' and the impugned mark 'DOPAMINE' is deceptively and confusingly similar to their mark 'DOPAMET'. Th

opponent's mark 'DOPAMET' has acquired reputation. The impugned mark is neither distinctive nor capable of distinguishing the goods of applicant

during the course of trade. Thus, the mark does not qualify for registration under section 9 of the Act. The mark does not qualify for registration under

sections 11(a) and 11(e) of the Act.

In usual course the appellants filed the counter statement denying all the material allegations of the opponent. The opponents filed their evidence by

way of affidavit dated 20.2.1996 and the appellant/applicant did not file any evidence under rule 54. The hearing was held on 26.2.1999 by the

Assistant Registrar. It was argued by the learned counsel for the opponent that the word 'DOPAMINE' is a non proprietary generic name and as

such, it should not be allowed to be registered as a trade mark under any circumstances. He submitted that DOPAMINE is the name of a particular

chemical compound which has a therapeutic property of being an 'ad energic' and this fact is well known to the doctors, chemists, pharmacists and all

other persons associated with the pharmaceutical trade. Thus, the mark does not qualify for registration under section 9 of the Trade and Merchandise

Marks Act, 1958. Further, the mark is descriptive of goods and thus is not qualified to be registered. The learned counsel for the appellant/applicant

opposed the arguments advanced by the learned counsel for the opponent/first respondent. The learned Assistant Registrar concluded that the

opponents have rightly said that the word DOPAMINE is a non proprietary generic name of a single chemical compound and as such it cannot be

registered as a trade mark and thus he is in agreement with Shri Krishna, the learned counsel for the opponents in that regard.

4 . The appeal was heard in the sitting of the Board held at Ahmedabad on 21.12.2004. Shri R.R. Shah appeared for the appellant and Shri Manish

Saurastri appeared for the first respondent.

5 . In the appeal, besides the general description of the proceedings of opposition held by the Assistant Registrar earlier, the appellant has submitted

that the mark applied for consists of a word DOPAMINE word per se used in respect of pharmaceutical and medicinal preparations contained in

Schedule 'H' drug. The appellant submitted that the mark of the appellant is neither identical nor similar to the mark of the first respondent. The

Assistant Registrar has misguided himself and, in any case, the order should have been passed under Section 18(4) in favour of the appellant. The

Assistant Registrar was wrong in referring to a letter dated 8.2.1995 addressed by M/s. Inga Laboratories Ltd., in his order and, according to the

appellant, the contents of the letter are at the back of the mind of the Assistant Registrar in arriving at the conclusion drawn by him in the matter.

6 . We have carefully gone through the material placed before us in the matter and want to observe at the outset that it was unnecessary for the

learned Assistant Registrar to make reference of some letter written by M/s. Inga Laboratories Ltd. to the Controller General of Patents, Designs and

Trade Marks, Bombay, a copy whereof, it appears that he had been able to lay his hand upon.

7 . The learned counsel for the appellant argued that the impugned mark is not descriptive. It is not deceptively and confusingly similar to the

opponent's trade mark DUPAMET. It is capable of distinguishing the goods of the appellant and further it being in relation to Schedule 'H' drugs,

which are to be supplied only on the prescription of a Doctor, there is nothing wrong in the registration of such a mark. The learned counsel for the

first respondent cited various authorities from the Supreme Court and the High Courts in India and the judgments of the Federal Supreme Court of

Germany wherein a consistent view had been expressed to take a strict view for allowing registration of a mark in the area of drugs and

pharmaceuticals. The learned counsel also submitted an extract from Butterworth's Medical Dictionary wherein the word DUPAMINE with exactly

the same spellings as in the impugned mark has been explained to be ""BP Commission approved name for 2-(3,4-dihydroxyphenyl) ethylamine; a

sympathomimetic drug acting as a neurotransmitter and secreted by neurons situated in the ventral hypothalamus, amongst other places, and passing

along axons to the medical eminence from which it releases into the hypophyseal portal system factors which have either an inhibitory or releasing

effect. One of the dopamine agonists is bromocriptine."". Thus, there is no doubt that the impugned word is having a dictionary meaning and it is

descriptive of the material for which it is so named.

In the light of the above, we are of the view that the Assistant Registrar is correct in his conclusion that the mark fails to meet the requirements of

Section 9 of the Act and is confusingly similar to the mark of the first respondent. In passing, we want to make an observation that it was unnecessary

for the Assistant Registrar to reproduce the extract from a communication received from someone who is not a party to the dispute. Such

communications are routinely received in the offices of the instrumentals of the State and should be taken note of only when the same are of any

relevance in the connected issue. Anyhow, we are satisfied that the said communication has no way influenced the judgment of the Assistant

Registrar and in the appeal, we are also of the view that independent of that communication, the mark does not deserve registration. Accordingly, the

appeal is dismissed with no order as to costs.