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2003 Supreme(Del) 34
High Court Of Delhi
BIO-CHEM PHARMACEUTICAL INDUSTRIES - Appellant
Versus
ASTRON PHARMACEUTICALS - Respondent
Civil 44 of 2000
Decided On : 01/15/2003
AJAY SAHNI, OM PRAKASH AGRAWAL
The judgment established the importance of preventing confusion and deception in trade marks, especially in cases involving medicinal products, and emphasized the need for stricter measures to protect public health.
Headnote:
Trade Mark - Confusion and Deception - Trade and Merchandise Marks act, 1958 - Section 9(1)(d), 9(1)(e), 11(a), 12(1)
Fact of the Case:
The appellant's trade mark 'biocilin' was opposed by the respondent's trade mark 'bicillin' in Class 5. The court had to determine whether the registration of 'bicillin' would cause confusion or deception to purchasers and whether it would be in tune with the provisions of the Trade and Merchandise Marks act, 1958.
Finding of the Court:
The court found that there was phonetic similarity between 'biocilin' and 'bicillin', which could lead to confusion and deception among purchasers. The court also highlighted the importance of stringent measures in cases involving medicinal products, emphasizing the potential life-threatening consequences of confusion between such products.
Issues: The issues revolved around the likelihood of confusion or deception to purchasers and the applicability of the provisions of the Trade and Merchandise Marks act, 1958.
Ratio Decidendi: The court applied the test of deceptive similarity and emphasized the need for stricter measures in cases involving medicinal products. It also considered the provisions of Section 9(1)(d), 9(1)(e), 11(a), and 12(1) of the Trade and Merchandise Marks act, 1958.
Final Decision: The appeal was accepted, and the registration of the trade mark 'bicillin' was rejected.
( 1 )
( 2 ) THIS appeal is directed against an order dated 7th October, 1999 passed by the Assistant Registrar of Trade Marks dismissing Opposition No. DEL 8597 of the appellant-M/s. Biochem Pharmaceutical Industries and allowing the registration of the trade mark BICILLIN in Class 5.
( 3 ) THE trade mark of the appellant is biocilin while the trade mark of the respondent is bicillin . There is no dispute in between the parties about one aspect that biociiin as well as bicillin both have been used in respect of two drug components, namely, means two, Cell in standing a mixture of AMPICILLIN and CLOXACILLIN. In so far as biocilin is concerned, the appellants have acquired a reputation in the trade in respect of their trade mark.
( 4 ) THE case of the respondent was and is that bicillin is a composite word by using bi , meaning two and Cell in stands for a mixture of AMPICILLIN and cloxacillin.
( 5 ) TAKING the cases of both the parties at their face value, the question is whether it is likely to cause confusion or deception to the purchasers when they go to market to purchase biocilin and instead get bicillin . It is also required to be seen: "whether registration of "bicillin"would be in tune with clauses (d) and (e) of Section 9 (1) and Sections ll (a) and 12 (1) of the Trade and Merchandise Marks act, 1958 (in short the Act )?"
( 6 ) BEFORE I proceed further, it would be beneficial to reproduce Section 9 (1) (d) and (e), Section 11 and Section 12 (1) of the Act, which read as under:
" (9) Requisites for registration in Parts A and B of the Register. (1) A trade marks shall not be registered in Part A of the Register unless it contains or consists of at least one of the following essential particulars, namely: (a) xxx (b) xxx (c) xxx (d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India; (e) any other distinctive mark;. . . . . . . . . . . . "
"11. Prohibition of registration of certain marks. A Mark (a) the use of which would be likely to deceive or cause confusion; or (b) the use of which would be contrary to any law for the time being in force; or (c) which comprises or contains scandalous or obscene matter; or (d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or (e) which would otherwise be disentitled to protection in a Court; shall not be registered as a trade mark. "
"12. Prohibition of registration of identical or deceptively similar marks. (1) Save as provided in Sub-section (3) no trade mark shall be registered 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. " (Emphasis supplied)
( 7 ) IN so far as the objection taken by learned Counsel for the appellant relating to Section 9 (1) is concerned, I do not think that anything would turn upon it, for two views are possible calling it an invented word by using the word bi and taking the word cellin from the two medicines, namely, AMPICILLIN and CLOXACILLIN.
( 8 ) IN so far as Clause (d) of Section 9 of the Act is concerned, neither the word biocilin nor the word "bicillin has any direct reference to the character or quality of goods excepting that it may be some drug, and therefore, this Clause (d) of Section 9 is certainly not of any help to learned Counsel for the appellant.
( 9 ) NOW, coming to Clause (e) relating to "any other distinctive mark", the above observation applies equally to this argument as well and therefore, this will also be not of any help to learned Counsel for the appellant.
( 10 ) NOW, coming to Section 11 (a), this appears to be t
