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Judgment
Raghbir Singh, J
1 . Appeal No. 4/1999 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks
Act, 1999 and has been numbered as TA/277/2004/TM/AMD.
2 . The first respondent filed an application on 9.3.1998 for registration of a trade mark ""KIDRAL"" word per se in class 5 in respect of Medicinal and
Pharmaceutical preparations. The application was ordered by the Registrar to be advertised before acceptance in the Trade Marks Journal.
Accordingly, the mark was advertised in the Trade Marks Journal No. 1107 dated 16.7.1995 at page 1253 as proposed to be used. The appellant gave
a notice of its intention to oppose the registration on 14.11.1995 on the ground that it is the registered proprietors of trade mark ""TEDRAL"" under No.
130520 in class 5 in respect of Pharmaceutical products. The impugned mark ""KIDRAL"" in class 5 in respect of Pharmaceutical and Medicinal
preparations is deceptively similar to its registered trade mark ""TEDRAL"". The appellant's mark ""TEDRAL"" has acquired international reputation
including in India in respect of Pharmaceutical and Medicinal products. Thus, the impugned mark is violative of the provisions of Sections 11(a) and
11(e) of the Act. The impugned mark is neither distinctive nor capable of distinguishing the first respondent's goods. In the usual course, the first
respondent filed its counter statement. The learned Assistant Registrar heard the matter on 22.2.1999 and as observed by him that the learned counsel
for the opponent in the matter restricted her arguments to Section 12(1) and thus, the Assistant Registrar has chosen to examine the matter under the
parameters of Section 12(1) only. The learned counsel for the appellant argued before the Assistant Registrar that the appellants are manufacturing
and marketing medicines in tablet form for the treatment of asthma under their registered trade mark ""TEDRAL"" and these tablets can only be
purchased from the druggists/chemists on Doctors prescriptions only. Thus, the impugned mark ""KIDRAL"" being deceptively similar to the registered
mark ""TEDRAL"" of the appellant, chances of confusion and deception are bound to happen in course of time. The learned counsel for the first
respondent submitted that the medicines manufactured by the respondent are generally sold/purchased only on Physicians/Doctors prescriptions. The
medicine/drug concerned under the impugned mark is also a schedule 'H' drug which can be sold/ purchased on Physicians prescription only. There is
no possibility of chemists or customers getting confused while selling/purchasing the drugs. He argued that the marks in question are not similar
visually as the mark of the first respondent starts with a prefix ""KI"" and the registered trade mark of the appellants starts with the prefix 'TE"". Since
there is a prima facie difference between the two prefixes, there is no scope for confusion. In view of the above, the Assistant Registrar came to the
conclusion that the rival marks in the instant matter before him are dissimilar to each other. In view of the above, he ordered for dismissal of the
opposition and acceptance of the application.
In the appeal filed before the High Court of Gujarat at Ahmedabad, the appellant has submitted that the impugned mark is deceptively and
confusingly similar to the trade mark ""TEDRAL"" the name of the appellant. Furthermore, the goods in question being ""Medicinal and Pharmaceutical
preparations"" the prospect of harm to the general public by virtue of any confusion can be extremely dangerous. Established principles of law in the
matter of testing the confusing similarity amongst the marks inter se has not been taken into consideration. The Assistant Registrar is patently wrong
in concluding that the goods in question are Schedule 'H' drugs. He has completely overlooked that the first respondent has sought for registration for
Medicinal and Pharmaceutical goods"". The appellant holds the registered proprietorship of trade mark ""TEDRAL"" for ""Pharmaceutical preparations"".
Section 12(1) of the Trade and Merchandise Marks Act, 1958 is a statutory bar to allowing such registrations whereunder allowing registration of any
trade mark in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in
the name of a different proprietor in respect of the same goods or description of goods is barred. The appellant's trade mark TEDRAL in class 5 was
registered under No. 130520 on 12.8.1947 and has been renewed periodically from time to time and is still subsisting as a valid mark on the Register of
Trade Marks. The appellant has discussed the principles laid down in the various cases cited by the first respondent in support of his claim before the
Assistant Registrar and has distinguished the applicability thereof in the instant matter. The appellant has further cited some cases in support of his
claim for non acceptance of the registration of the mark. We do not propose to repeat the ratios of those cases here. The first respondent filed its
reply to oppose the appeal. It emphasized that the test in the matter of considering deceptive similarity is distinct in respect of consumer goods viz.
peppermint, chocolates, etc. than the medicinal preparations and more so in relation to the goods covered under Schedule 'H' and 'L' of the Drugs and
Cosmetic Rules. First respondent has submitted that the mark KIDRAL is an invented word coined out of two noun words, that is, 'KIDS' and
'ELECTRICAL'. The word 'KID' par of the mark is taken out of the word Kids and RAL part of the mark is taken out of the Electricals. The first
respondent has spent huge amount on publicity and also has mentioned sale figures from 1988 to 1997. The first respondent relied upon certain
judgments wherein certain High Courts have held that when the goods are pharmaceutical and the products are sold on the doctor's prescription,
chances of confusion is less or far remote, as in A. Wulfing Vs. C L & P Laboratories Ltd., AIR 1984 Bombay 281. The first respondent also claimed
the benefit of Section 12(3) of the Trade and Merchandise Marks Act. In the rejoinder filed by the appellant, it has generally reiterated the averments
made by it in the appeal.
The Board in its sitting held at Ahmedabad on 21.12.2004 heard the matter. Shri Chander Lall appeared for the appellant and Shri Y.J. Trivedi
appeared for the first respondent.
The learned counsel for the appellant submitted that the impugned application was made in the year 1988 and the user claimed is proposed to be
used. In view of that, any sales made prior to or subsequent to that is meaningless. Hence, any evidence adduced in support of the sales and publicity
made is meaningless. The impugned application is not in relation to any specific drug. It is generally for drugs and Pharmaceuticals. So any argument
that Schedule 'H' or any other scheduled drugs are sold under strict controls is also of no help. Thus, the first respondent has sought registration across
the board for any sort of drugs which it intends to bring out. In pleadings also subsequent to the filing of the application, there is no mention that the
impugned application is for a specific drug. The learned counsel argued for the application of the test laid down in Cadila's case and submitted that the
mark is confusingly and deceptively similar to its registered mark TEDRAL. The learned counsel for the first respondent argued that all sales are to
be made on the basis of prescriptions. The marks are phonetically, visually and structurally different from each other and thus both are distinct marks.
He cited the case of Cadila Healthcare Ltd. Vs. Swiss Pharma Pvt. Ltd. 2002 PTC 708 Gujarat in support of his argument.
On the basis of our careful examination of the pleadings from both sides and the arguments made in the hearing, we feel at the outset that all
concerned with the health care of the Society including the judicial organs have to be circumspect in the matter of identification about the
manufacturing and particularly the delivery system of the medicines and other health care support systems. The learned counsel for the first
respondent has rightly drawn our attention to the judgments of various Courts including the judgments of the High Courts and the Supreme Court
rendered in the past. It is true that one can draw support from certain judgments that in matter of delivery of medicines done under certain statutory
controls like medicines to be delivered to the health care institutions only like hospitals or to be given to the patients under prescription of doctors only,
the rigors of confusing and deceptively similarity may not be adhered to very strictly vis-Ã -vis where the delivery is done freely like of non
scheduled medicines. However, in view of the recent judgment of the Supreme Court in Cadila's case, we find no use of going into the details of the
past for deciding the immediate situation before us. We draw the following conclusions on the basis of the pleadings placed before us and the
arguments made before us.
(a) The user claimed in the impugned mark is proposed to be used. Thus, there is no scope for the first respondent to claim any acquired
distinctiveness and the capacity to distinguish it in terms of Section 9 of the Trade and Merchandise Marks Act, 1958.
(b) The impugned application is for class 5 goods generally, that is, Pharmaceutical medicines. The impugned mark is not destined to be used for a
specific drug used for specific ailments. Hence, the question of usage of the mark in relation to any scheduled drugs is meaningless. It is an application
for a blanket, open ended and unguided permission.
(c) There is no merit in the arguments of the first respondent that KIDRAL is a coined word out of two distinct words, that is, 'KID' and
'ELECTRICAL'. It is an argument having no nexus to the merits of the issue before us. The impugned application in relation to drugs and
pharmaceuticals and not in relation to toys or for that matter specifically the battery operated or electricity operated toys. The argument is self
defeating to the plea made in support of the distinctiveness or capacity to acquire distinctiveness issue of the matter.
(d) The four last letters, that is, DRAL are common in both the marks. But, we are left with two distinguishing letters 'KI' and 'TE'. The second
letters, that is, 'I' and 'E' are vowels and vowels of so closeness and proximity to each other phonetically that those are susceptible to be slurred and
confused both in English and the Indian vernacular languages. Thus, in train of events, we are left with the first letters, that is 'K' and 'T' which are
surely to be slurred while speaking across the counters or on phone or while getting delivery through a third person. Even the doctors, as they are
usually accused to be not good in hand writings, are likely to be misunderstood and chances of error are dangerously high.
Thus, in view of the ratio laid down and prescribed in the Cadila's case, we are left with inescapable conclusion that the impugned mark fails on all
counts, that is, it does not qualify under Section 9, Section 11 (a) and Section 12(1) of the Act. The submission made by the appellant in the appeal for
consideration under Section 12(3) is of no merit. There is no history of concurrent use as envisaged under the law developed in relation to the concept
of honest concurrent use. Furthermore, dishonesty is all pervasive in the choice of the word and thus the request fails as a whole on that count also.
8 . In view of the above, the order of the second respondent is set aside and the appeal is allowed. Consequently, the application No. 487133 of the
first respondent is rejected.