1992 Supreme(Guj) 128

Gujarat High Court
Judgename :R.K.Abichandani
CIBA GEIGY LIMITED - Appellant
Versus
TORRENT LABORATORIES Private Limited - Respondent
APPELLATE JURISDICTION 1 of 1992
Decided On : 05/06/1992

Headnote:

Trade and Merchandise Marks Act, 1958 – Section 9, 11, 12, 18, 20, 21, 29, 48, 77, 78, 109 – Drugs Control Administration – Medicinal and Pharmaceutical preparations – Respondents No. 1 made an application in accordance with the provisions of Sec. 20 of the Act - Petitioner gave notice of opposition to the registration under Sec. 21 (1) of he Act and respondent No. 1 – Applicant sent its counter-claim in support of his application. Evidence as required by Sec. 21 (4) was submitted in the prescribed manner by the parties – Petitioners contention was that it is carrying on business as manufacturers and merchants of medicines and pharmaceuticals and is a Company incorporated in Switzerland – According to the petitioner, it is Registered proprietor of Trade Mark ciba and several other trade marks incorporating the trade mark ciba which is a part of series of such trade mark ciba was registered under in Class 5 in respect of medicinal preparations pharmaceutical and veterinary preparations, sanitary chemical substances, disinfectants preparations for killing weeds and destroying vermin – According to petitioner ciba forms fore-part and most distinctive and prominent feature of plaintiffs corporate name and trading style – Ciba of India Limited which was predecessor-in-title of Hindustan Ciba-Geigy were recorded registered users of trade mark ciba – Cilia of India limited, after change of its name into Hindustan Ciba-Geigy Limited had extensively used trade mark ciba – According to petitioner, they were Registered Proprietor of Trade Marks ciba, cibazol and cibalgin and other trade marks containing word ciba goods under trademarks cibazol and CIBALGIN were continuously and extensively sold throughout India by Hindustan Ciba-Geigy Limited as registered users/licensees – Petitioner therefore, opposed the use of trade mark ulciban on ground that it was likely to be taken as having some connection with the petitioner because it contains the word ciba which is the most significant part of petitioners name and because ciba is one in a series of trade marks owned by petitioner which contain the word ciba. – According 10 petitioner, their trade mark ciba is distinctive of and is extensively identified with its goods and use of word ciba in the impugned mark ulciban was bound to cause confusion and deception amongst trade and public who would assume that it was yet another mark of the petitioner – Held, In instant case, as held hereinabove, the comparison on whole clearly shows that likelihood of deception or confusion is very strong. It would be noticed from decision of Justice S. H. Sheth in Appeal from rendered that after considering the decision of Supreme Court in Roche and Companys case (supra) and applying the test of visual and phonetic similarity laid down therein in respect of the impugned mark kempisillin and registered trade mark campicillin, upheld the order granting interim injunction on a prima facie finding that these marks were greatly similar to each other and were likely to confuse or deceive their buyers. Even in the decision of this Court in Appeal Order rendered – Court while considering question of grant of interim relief found that there was nothing on record to prima facie show that defendant company had started using the mark carafet to deceive or take advantage of plaintiffs reputation in business – Supreme Court in American Home Products Corporation v. Mac laboratories Pvt. Ltd. and Am. , (reported in AIR 1986 SC 137) held that the intention of the American Company to use the trade mark through the Indian company which was subsequently to get itself registered as the registered user of the said trade mark could not but be characterised as bona fide – This authority in no way supports the petitioner and if at all on the argument of user canvassed by the learned Counsel for the respondent No. 1, it goes against his contention decision has no bearing on the question involved in this matter regarding the prohibition of the registration of a mark under Sec. 11 of Act – On which reliance was placed on behalf of respondent No. 1, Court was considering question of grant of temporary injunction against use of drug under brand name curechlor and trade mark reclor both in respect of medicinal preparations – Court found that two marks were not similar either visually or phonetically and was no instance of Chemist or Customer getting confused while selling or purchasing drugs – It was found that mark curechlor cannot be said to deceptively similar to mark reclor and there was no prima facie case for infringement made out by the plaintiff – Therefore this decision cannot assist respondent – Application is rejected.