The Registrar of Trade Marks must give due consideration to all submissions made by applicants, and failure to do so constitutes a lack of application of mind, warranting remand for reconsideration.

JUDGMENT :

JYOTI SINGH, J.

1. This appeal is filed on behalf of the Appellant under Section 91 of The Trade Marks Act, 1999 (‘1999 Act’) read with Rule 156 of The Trade Marks Rules, 2017 (‘2017 Rules’) laying a challenge to order dated 27.01.2025, whereby the Registrar of Trade Marks has refused to register the trademark DISOPIL on the ground that the applied trademark is similar to registered trademark DESOPILL, bearing Application No. 4040407 in Class 05 for similar/identical goods being ‘Pharmaceutical, medicinal, allopathic, ayurvedic and veterinary preparations’.

2. Desirous of getting the trademark DISOPIL registered in Class 05 for its goods being medicinal preparations etc., Appellant filed TM-A bearing No. 5971233 on 08.06.2023. The application was examined and Examination Report was issued on 08.11.2023 raising an objection under Section 11 (1) of 1999 Act citing the trademark DESOPILL. Detailed reply was filed by the Appellant to the Examination Report on 23.11.2023. Hearing notice was issued on 27.11.2024 scheduling the hearing for 28.01.2025, which was attended by the attorneys of the Appellant and detailed submissions were made. The attorneys also filed two TM-M requests, one for deletion of ‘&’ from the description of goods and services and other seeking extension of time. By impugned order dated 27.01.2025, the Registrar of Trade Marks has refused to register the trademark DISOPIL and has rejected the application.

3. Learned counsel for the Appellant submits that the impugned order is illegal and reflects non-application of mind. Firstly, the Registrar has wrongly recorded that Appellant has not complied with the direction to delete the term ‘&’ from goods description by filing TM-M with requisite fees, overlooking the fact that the Registrar was apprised that the Form shall be filed during the course of the day and in fact was filed on the same day. The second TM-M Form was also filed seeking extension of time to submit the proof of user by the Appellant and the Registrar ought to have granted time to bring the same on record and not doing so violates principles of natural justice.

4. It is further submitted that in the Examination Report, an objection was raised under Section 11 (1) of 1999 Act on the ground that the applied mark was identical with or similar to a prior existing mark ‘DESOPILL’ for similar/identical goods. In the reply to the Examination Report, Appellant had brought forth two crucial facts: (a) the cited mark was registered in the name of M/s HAX PHARMACEUTICALS and was not used by the said entity at any point in time; (b) the acronym ‘PIL’ comes from Appellant’s name ‘PHYCHOTROPICS INDIA LIMITED’ which is a renowned domestic pharmaceutical company and ‘PIL’ has been registered in favour of the Appellant since 1986. Several variations of ‘PIL’ using suffixes or prefixes such as K-PIL, CALPIL, PIL POSE etc., have also been registered, details of which furnished in the detailed reply and therefore, the mark ‘PIL’ acts as a distinctive source identifier of the Appellant. This crucial fact has been totally ignored by the Registrar as reflected from the impugned order.

5. It is urged that in the pharmaceutical industry, it is a common practice that the medicines are named either on the basis of the salt or the ailments they treat or on the name of the company concerned. The applied mark DISOPIL was honestly adopted by the Appellant with prior existing registered mark ‘PIL’. It is further argued that the Registrar has also overlooked the fact that the Appellant has prior registration for the word mark ‘BISOPIL’ in Class 05. Reliance is placed on the judgment of this Court in Mankind Phar