Summary of Judgment
Tribunal cannot rely upon what is not evidence such as hearsay. Also we would not be justified in basing our Judgment or order upon evidence which is not proved either by way of an affidavit of the person who is a party to the documents (exhibit) or at least stating in the affidavit the basis of his knowledge with respect to the exhibit/annexure concerned. There can hardly be any dispute that the rival marks `SERADIC’ are identical, phonetically, visually and structurally. Therefore, there can be also no doubt that the registration of the two marks would cause confusion and deception in trade. The bar of Section 11 (1) (a) of the Act would be attracted as there is identity of trade mark as well as identity of goods covered by such mark. A trader acquires the right of property in a distinctive mark merely by using it upon or in connection with his goods. Such a trader is entitled to protection no sooner the product with the trade mark is launched upon the market. Registration under the Trade Marks Act does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It is well established that registration itself does not create the trade mark, which exists independent of such registration. It is priority in adoption and using the trade mark that is regarded as superior to priority in registration. To establish the priority in adoption and use of a trade mark it would suffice if the goods with the mark upon it has actually become a vendible article in the market with the intent on the part of the proprietor to continue its production and sale. It is not necessary that such goods should have acquired reputation for quality under that mark. The actual test is the actual use of the mark. There is no bar to the assignment of an unregistered trade mark along with good will. Assignee would in such circumstances step into the shoes of the assignor and can tack on the period of user of the mark by the assignor. Judged in the light thereof applicant is prior adopter and user of the trade mark in point of time than the respondent. Applicant’s claim to have acquired the right in the trade mark in question from the predecessor in title of the said trade mark by way of assignment stands established by virtue of the deed of assignment dated 3.3.2003 and thus its claim as proprietor. Much has also been made about the respondent not making a search before adoption of the mark. It was sought to be contended on behalf of the applicant that the adoption by the respondent was not bona fide or honest as a mere search in the office of the Registry would have established that the application (of OPPL) for registration of the trade mark in question was pending registration. The legal notices exchanged between the parties show that the attorneys for the applicant have furnished all such documentary proofs as was required of the applicant by the respondent’s attorneys. At least there is no objection placed on record with regard to non-furnishing of any such information called for from applicant’s attorneys. Despite such legal notice to cease and desist issued on behalf of the applicant, respondent did not choose to take action which it was entitled to under Section 142 of the Act. This section protects the person against groundless threats of infringement by giving him an opportunity to bring a suit against the person making such threats and obtain a declaration that the threats are unjustifiable. On the other hand, it was, sought to be contended that despite knowledge and exchange of legal notices no proceedings were initiated by the applicant, therefore, there is delay and latches on part of the applicant in making the instant application for rectification. We have to reject the said contention on the ground that a specifically pleaded, there was no evidence of use of the said Trade Mark by respondent in the market after the cease and desist notices to compel the applicant to take legal action. Except a general denial on the side of respondent there is no evidence let in to show that the said plea is incorrect. We have to accept the submission made on behalf of the applicant that it was the letter of the Drug Controller, Kerala State dated 12.01.2006 (Annexure O) which promoted the applicant to file the instant application for rectification. The objection based on delay and latches is accordingly rejected. As already noticed the rival marks are identical and also the goods covered by the said trade marks being identical there is every likelihood of confusion or deception for the purposes of Section 11(i) (a). Applicant as already held, has established its claim as proprietor and prior adopter and user. It must therefore be held that, the respondent’s mark has been wrongly entered upon the Register in contravention of Section 11 and Section and 18 of the Act. The expression “deceive the public or cause confusion” in Section 9(2) (a) is, in our opinion, with reference to inherent nature of the mark itself and not with reference to another trade mark identical or similar to the mark in question dealt with under section 11(i) of the Act. Section 12 provides for registration of same or similar trade mark by more than one proprietor in the case of honest concurrent use, or for other special circumstances. The operative words in the section being honest concurrent use, doctrine of honest concurrent user was evolved for protection in cases where the use of the mark had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not evolve any dishonesty or other wrongful conduct on the part of the proprietor of the mark. No relief can be granted to the respondent based on section 12 of the Act as similar trade mark was in use prior to its adoption by the respondent besides there was the application pending registration before the registry concerned. The respondent has taken the risk in adopting the mark without proper enquiries as to whether anyone else had adopted the mark and had applied for registration of the same. Without having taken this elementary precaution of search in the registry its claim to honest adoption/user cannot be sustained. The products covered by the rival trade marks in question are medicinal and pharmaceutical products, therefore, this tribunal has also to keep in view the observations of the Supreme Court in Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 : AIR 2001 SC 1952 : [2001] PTC (21) 546, wherein it is observed that under section 17B of the Drugs and Cosmetics Act the imitation or resemblance of another drug in a manner likely to deceive is regarded as a “spurious” drug. The application is allowed holding that the register of trade marks requires to be rectified by directing the Registrar of Trade Marks to expunge and cancel the mark “Seradic” under Application No. 1128494 and Certificate No. 326709 dated March 7, 2005, from the register of the Trade Marks Registry.