Mr. Vikash Rajgarhia v. Aristo Pharmaceuticals
Limited – OA/51/2006/TM/AMD  INIPAB 2 (19 March 2008)
INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-1, 2nd Floor, 443 Anna Salai, Teynampet, Chennai – 600018
(Circuit Bench at Ahmedabad)
WEDNESDAY, THIS THE 19TH DAY OF MARCH, 2008
Hon’ble Shri Z.S. Negi … Vice-Chairman
Hon’ble Shri Syed Obaidur Rahaman … Technical Member
Mr. Vikash Rajgarhia,
Trading as the Proprietor in the name
and style of Finecure Pharmaceuticals,
34, Nautan Cloth Market,
outside Raipur Gate,
Ahmedabad – 380 001 … Appellant
(By Advocate – None)
1. Aristo Pharmaceuticals Limited,
Having its registered office at
3rd Floor, 12, J.N. Heredia Marg,
Mumbai – 400 037.
2. The Senior Examiner of Trade Marks,
Trade Marks Registry,
15/27 National Chambers, 1st Floor,
Ahmedabad – 380 009. … Respondents
(By Senior Advocate Shri R. R. Shah for R1)
Hon’ble Shri Z.S. Negi, Vice-Chairman:
This is an appeal under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 1.5.2006 passed by the Senior Examiner of Trade Marks whereby the application for registration of Trade Mark “OFLEX” has been refused.
2. The brief facts giving rise to the appeal is that the appellant Mr. Vikash Rajgarhia is trading as a proprietor in the name and style of Finecure Pharmaceuticals. The appellant on 6.9.2000 coined the word ‘OFLEX’ by combining letters ‘OFL’ of the generic molecule ‘Ofloxacin’ with the letters ‘EX’ of the word ‘excipients’ and adopted the said word as the trade mark and obtained permission from the concerned authority to manufacture pharmaceutical preparation. An application No.1057263 in Class-5 in respect of Pharmaceutical and Medicinal preparations was filed on 7.11.2001 seeking registration of the trade mark ‘OFLEX’ claiming user since 4.1.2000 and the said application was advertised before acceptance in the Trade Marks Journal Mega 6 dated 25.11.2003. The said application for registration was opposed by the respondent No.1, a company engaged in the business of manufacturing and/or marketing and/or dealing in similar goods that is to say medicinal and pharmaceutical preparations, by filing opposition No. AMD-174953 on the grounds, inter alia, that in or about 2000 it originally conceived the trade mark ‘OFLER’ and finally adopted the same by filing application No. 948619 (proposing to be used) in class 5 in respect of its goods; that after obtaining Drug Licence it commenced actual commercial use of mark by manufacturing and/or marketing its goods in or about January, 2001; that it is the proprietor and prior user of the trade mark ‘OFLER’ in respect of aforementioned goods and the appellant’s application was subsequent to the respondent No.1’s prior application No. 948619 filed on 18.8.2000; that it is the prior adopter and user of the trade mark since 31.1.2001 and has launched the medicine prior to the appellant; that it is the registered owner of the trade mark ‘OFLER-TZ’ under No. 1093769 as of 9.4.2002 and that the use of mark ‘OFLER’ or any similar mark with or without variation by another person in respect of the same or similar goods is likely to deceive the public and cause confusion among the trade. After receiving evidence from both parties the matter was posted for hearing 31.3.2006. The Senior Examiner of Trade Marks after hearing the parties has refused the application for registration concluding as under:-
“ It is a hard case where marks are deceptive, that too pharmaceuticals having same ingredients, adoption hardly few months gap and use also few months away. One earlier application to support the case of opponents is as ’proposed to be used’ and withdrawn without coming up for reasons to withdraw, insertion of use in regd. application also at later stage. Opponents and applicant both have filed half hearted evidences not bothering seriously, the concern. But certainly the onus is more upon applicants to show that they have right of registration an hence applicants stand to loose if evidence of applicant does not over weigh against evidence of opponents, the regd. owner of conflicting mark. The applicants have not been able to discharge the onus.
In view of the above the registration of mark of applicants is refused.”
3. Aggrieved by the impugned order dated 1.5.2006, the appellant has preferred this appeal on the grounds, inter alia, that the appellant is prior in adoption of the said coined word, used the same for almost one year and thereafter applied for registration shows that appellant is lawfully the first and rightful proprietor of the mark ‘OFLEX’ under section 18(1) and has a right to registration absolutely under section 18(4) of the Act; that the appellant having earned the dual priority on the impugned mark can neither have caused confusion or deception to the consumers of anti-bacterial pharmaceutical preparations nor have passed off its goods as goods of the respondent No.1 in contravention of sub-sections (1) and (3), respectively, of section 11 of the Act; that having regard to the said dual priority, the trade mark ‘OFLEX’ be granted registration under clause (a) of section 34 of the Act and that the appellant craves leave to file Form TM-16 to correct/amend under section 22 of the Act the correct date of user which is 28.11.2000.
4. The respondent No.1 filed the counter-statement on 4th December, 2006 denying the material averments made in the appeal and the appellant filed on 14th December, 2006 the reply to the counter-statement. The appeal was fixed for hearing on 20.2.2008 before the Circuit Bench sitting at Ahmedabad when Shri R.R. Shah, Advocate appeared on behalf of the respondent No.1 but none appeared on behalf of the appellant. The appellant did not appear before the Circuit Bench despite service of hearing notice, the arguments of learned counsel for the respondent No.1 was heard. After conclusion of the hearing, the appellant has sent an affidavit annexing therewith documents which the appellant intended to rely upon. As the affidavit and documents were filed after conclusion of the hearing of the appeal and the same were filed without leave of this Appellate Board, the same for obvious reasons cannot be taken into consideration by this Appellate Board at this stage.
5. Shri Shah, learned counsel for the respondent No.1, contended that the claim of the appellant that it is prior user of mark is false and cannot be accepted. He pointed out that the copies of invoices and consignment notes adduced in evidence of user are not acceptable as there is not a iota of proof to show that excise duty were paid on the goods inter-transferred by Finecure Pharmaceuticals, Ahmedabad to Finecure Pharmaceuticals, Muzaffarpur, Bihar and there are no gate passes produced to show actual inter-transfer of goods. Since the appellant could not show its actual commercial use prior to 9.4.2002, it resorted to manipulate to create document by inter-transfer dated 17.11.2000 which is not actual commercial use of the mark. The copies of invoices at pages 131 to 139 show that the goods were consigned to only one party, namely, Pharma Distributors, Muzaffarpur.by the appellant’s office at Muzaffarpur through hand delivery. He further contended that appellant in its application dated 7.11.2001 for registration has with deliberate and malafide intention refrained from making any definite claim of user such as whether the mark has been used previously/is being used or is proposed to be used. When the applicant does not claim to be the proprietor of a trade mark used or proposed to be used by him he cannot be desirous of registering it under section 18(1) of the Act.
6. After having heard the learned counsel for the respondent No.1 and going through the pleadings, the main question that emerged for our decision is who is the first adopter and user of the competing marks. The appellant has claimed that it coined the mark ‘OFLEX’ and is using the same since 4.1.2000. The evidence produced in support of claim of user are invoices and Consignment Notes of which the first Consignment Note is dated 17.11.2000 (though not legible) is inter-transfer to consignee’s office at Muzaffarpur but without any evidence to prove the genuineness of the document as the respondent No.1 has disputed its genuineness. Even when the appellant was know of that the respondent No.1 in its counter-statement has disputed the
genuineness of the same, the appellant has not attempted to prove its genuineness and hence it is difficult for us to take it into account as an evidence of user of mark in the year 2000. Again, the copies of invoices at pages 131 to 139, the Consignee is same in all the cases (Pharma Distributors, Muzaffarpur) and the Consignor is Finecure Pharmaceuticals, Muzaffarpur. There is no explanation as to whether the Pharma Distributors is the sole distributor appointed by the Finecure Phamaceuticals, if so, the areas falling under its distributorship. There are no other invoices in the years 2000 and 2001 issued in the name of any other person and such invoices give rise to doubt about the genuineness thereof. The other invoice of the appellant are at pp. 89 to 113 and out of those the first invoice is at p. 89 dated 9.4.2002. On the other hand the respondent No.1 claimed its user to be since January, 2001 and it is the owner of registered trade mark ‘OFLER-TZ’. The first invoice adduced by the respondent No.1 at page 78 is invoice No.84-2554 dated 24.1.2001and the other invoices are at pp.28 to 77. There is no doubt that the marks ‘OFLEX’ and ‘OFLER’ are deceptively similar to each other phonetically as well as structurally. Since goods covered by both the marks are medicinal preparations, we have to adopt a stricter approach while applying the test to judge the possibility of confusion of one medicinal product with another by the consumer. This Appellate Board had occasion to consider whether the second respondent’s disputed mark ‘STEMIZ’ is similar to that of the appellant’s mark ‘STMIN’ and the same would cause confusion in the trade. It was observed by this Appellate Board as under:-
“ The appellant’s mark is ‘STEMIN’ and the second respondent’s mark is ’STEMIZ’. Except the last letter ’Z’ in the disputed mark, the other letters are same.
If we have a look at both the marks, it is (sic) unable to differentiate to distinguish the second respondent’s impugned mark from that of the appellant’s mark. As already stated, except the last letter, the totality of the name is same. Phonetically, visually and also in writing nature, the impugned mark is identical with that the appellant’s mark. Both the marks being used in respect of medicinal products, no confusion or deception can be allowed however negligible it may be. The medicinal products being used for human beings in respect of their health , even the slightest confusion may become hazardous to one’s life and as such, the danger is much more to human life.
Both the marks are identical and hence the impugned mark of the second respondent cannot be registered.”
7. After having perused the documents, we are in agreement with the observation made by the Senior Examiner of Trade Marks that the opponents and applicant both have filed half hearted evidences not bothering seriously, the concern. But certainly the onus is more upon applicants to show that they have right of registration and hence applicants stand to loose if evidence of applicant does not over weigh against evidence of opponents, the registered owner of conflicting mark. The appellant has failed to establish it use of the mark since 4.1.2000. The appellant has on the basis of available documents on our record has proved the user only since 9.4.2002. We, therefore, see no reason to interfere with the conclusion arrived at by the Senior Examiner of Trade Marks.
8. In view of the above, we dismiss the appeal. There shall be no order as to costs.
(Syed Obaidur Rahaman) (Z. S. Negi)
Technical Member Vice-Chairman
Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.
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