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2001 Supreme(Guj) 850
IN THE HIGH COURT OF GUJARAT
K.M. MEHTA, J.
Cadila Laboratories Ltd. - Petitioner
Versus
The Registrar of Trade Marks - Respondent
Appeal under Section 109 No. 22 of 1993.
Decided on : 21-06-2001
Advocate Appeared:
For the Petitioner:R.R. Shah, Advocate.
For the Respondent:N.D. Nanavati, Advocate.
The main legal point established in the judgment is that the Registrar must advertise a trade mark application for public objections before acceptance, as required by Section 20(1) proviso of the Trade and Merchandise Marks Act, 1958.
Headnote:
Trade Mark - Registration - Trade and Merchandise Marks Act, 1958 - Section 109 - Section 12(1), Section 18(4), Section 20(1) - The judgment discusses the rejection of the application for registration of the trade mark 'Brofex' for pharmaceutical and medicinal preparations under the Trade and Merchandise Marks Act, 1958. The court analyzed the relevant statutory provisions and held that the Registrar erred in refusing the application before advertising it for public objections, as required by Section 20(1) proviso. The court set aside the Registrar's order and directed the application to be advertised before acceptance.
Fact of the Case:
The petitioner filed an application for registration of the trade mark 'Brofex' for pharmaceutical and medicinal preparations. The Registrar rejected the application without advertising it for public objections, as required by Section 20(1) proviso.
Finding of the Court:
The court found that the Registrar erred in refusing the application before advertising it for public objections, as required by Section 20(1) proviso.
Issues: The issues involved the refusal of the application for registration of the trade mark 'Brofex' without advertising it for public objections, as required by Section 20(1) proviso.
Ratio Decidendi: The court held that the Registrar erred in refusing the application before advertising it for public objections, as required by Section 20(1) proviso.
Final Decision: The court set aside the Registrar's order and directed the application to be advertised before acceptance.
JUDGMENT :
K.M. Mehta, J.
Cadila Laboratories-petitioner has filed this appeal under Section 109 of the Trade and Merchandise Marks Act, 1958 against the judgment and order dated 14.11.1990 passed by the Assistant Registrar, Trade Marks, Ahmedabad (hereinafter referred to as 'respondent No. 2). Respondent No. 2 by the said decision was pleased to reject the application filed by the petitioner for registration of its Trade Mark consisting of the word 'Brofex' (word per se) for the specification of goods to read as 'Pharmaceutical and Medicinal Preparations' in class 5 of 4th Schedule to the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as 'the Rules'). The petitioner had also filed this application under Section 12(1) read with Section 18(4) of the Act. The Registrar was pleased to reject the application and ordered for advertisement in the Trade Mark Journal.
2. The relevant facts giving rise to this appeal are as under:
2.1 The petitioner has filed an application on 14.9.1987 before the Registry of Trade Mark, Bombay for registration of a Trade Mark consisting of the word 'Brofex' (word per se) for the specification of the goods to read as 'Pharmaceutical and Medicinal Preparations' in class 5 of 4th Schedule to the Trade and Merchandise Marks Rules, 1959. The application was numbered as No. 478285. In the said application the user of the mark was not claimed as it was "proposed to be used."
2.2 It was submitted that the Registrar of Trade Marks examined the said application and the examination report was communicated vide No. U/3144 dated 27th September, 1989 whereby the Registrar objected to the registration of the abovementioned trade mark on the ground that the mark applied for its conflicting to registered Trade Mark BOROFAX in No. 12740 for the goods medicinal and pharmaceutical preparations owned by M/s. Wellcome Foundation Limited. Copy of the said examination report dated 27.9.1989 is enclosed with this petition.
2.3 On coming to know of the report the learned advocate for the petitioner by his letter dated 3.10.1989 stated that the petitioner's impugned trade mark was not identical with or deceptively similar to the cited tragic mark and the application should not be refused registration but should be accepted for registration at an early date. The Registrar, Trade Marks, thereafter gave hearing to the petitioner's learned advocate and the hearing was fixed on 13.9.1990.
2.4 After shifting of the office of the Registry Branch at Ahmedabad, learned advocate for the petitioner at the hearing before the Registry, Trade Mark, submitted on behalf of the petitioner that the objection raised under Section 12(1) of the Act was not tenable inasmuch as the rival marks were not "deceptively similar" and the Registrar is duty bound to advertise the impugned application under Section 20(1) proviso before acceptance in the Trade Marks Journal for inviting the public objections if any including the objections from proprietors of the cited mark.
2.5 However, respondent No. 2 did not accept the aforesaid arguments advanced on behalf of the petitioners and rejected the impugned application. However, after hearing on 13.9.1990, the said application was rejected by respondent No. 2 by his letter dated 1.11.1990. The petitioners thereupon applied for the grounds of the learned Assistant Registrar's said decision by filing prescribed form TM 15 dated 5.11.1990 and the grounds in the impugned decision dated 14.11.1990 of the learned Assistant Registrar. The said decision and the order was forwarded to the petitioner's advocate by the Trade Marks Registry branch by letter dated 17.1.1991.
3. Being aggrieved and dissatisfied with the aforesaid decision of respondent No. 2 dated 14.11.1990 wherein the Assistant Registrar, Trade Mark, was pleased to refuse to advertise the application before acceptance as per proviso to Section 20, the petitioners have filed this appeal before this court under Section 109(2) of the Act in this beha
