IMPORTANT POINT
The court established that prior use and the potential for public confusion are crucial in trademark registration disputes, particularly in the pharmaceutical industry.

JUDGMENT :

Senthilkumar Ramamoorthy, J.

[PRAYER : This Transfer Civil Miscellaneous Appeal (Trademarks) filed under Section 91 of the Trade Marks Act, 1999 in respect of goods falling in class 5, prays to:

(a) Allow the appeal of the Appellant, set aside the order dated 26/07/2013 of the Respondent No.2 herein, the Learned Deputy Registrar of Trade Marks, Mumbai passed in Opposition No.BOM-716540 to Application No.749366 in Class 5 and communicated vide Letter dated 07/01/2014 and allow the Opposition filed by the Appellant against the Respondent No.1 and thus render justice;

(b) the Respondent No.1 be asked to bear the cost of this proceedings under the provisions of Rule 19 of Intellectual Property Appellate Board (Procedure) Rules, 2003 read with paragraph (d) of sub-Section (2) of Section 92 of the Trade Marks Act, 1999 on the ground that (i) the Respondent No.1 has knowingly and deliberately with dishonest intention in bad faith adopted the impugned mark which is closely, confusingly and deceptively similar to the prior registered trade mark of the Appellant in relation to medicinal and/or pharmaceutical preparations and, (ii) the Respondent No.1 filed the impugned application in total disregard to registration of trade marks in relation to pharmaceutical preparations in Class 05 with a view to avoid causing any confusion/deception among consumers and thus render justice;

(c) Pending the hearing and final disposal of this appeal, direct the Trade Mark Registry not to issue the registration certificate; &

(d) Pass any other further order(s) as this Court may deem fit and proper in the facts and circumstances of this case.]

Background

This appeal is directed against the order dated 26.07.2013 rejecting Opposition No.716540 and, consequently, accepting Application No.749366 for registration of the trademark 'CANDEX-B' in Class 5.

2. The first respondent herein filed Application No.749366 on 21.03.1997 on “proposed to be used” basis for registration of the trademark 'CANDEX-B' in Class 5 relating to pharmaceutical products. The application was advertised in the trademarks journal on 16.08.2007. Upon noticing such advertisement, the appellant lodged the notice of opposition on 15.01.2008. The first respondent filed a counter statement in response on 23.04.2008. Both the contesting parties adduced evidence in support of the opposition and application, respectively. Eventually, by impugned order dated 26.07.2013, the opposition was rejected and the application was accepted for registration. The present appeal arises in the said facts and circumstances.

Counsel and their contentions:

3. Oral arguments on behalf of the appellant were advanced by Mr. Mahesh Mahadgut, learned counsel, assisted by Mr. R. Sathish Kumar and Ms. M.R. Meha Varshini, learned counsel; on behalf of the first respondent by Mr. N. Alagu Narayanan, learned counsel for M/s.RRN Legal; and by Mr. Rajesh Vivekanandan, Deputy Solicitor General, on behalf of the second respondent.

4. Learned counsel for the appellant submitted that the appellant honestly coined, adopted and used the trademark 'CANDID' in respect of dermatological products since 1978-79. He further submitted that the said products bearing the trademark 'CANDID' are being used openly, honestly and continuously since then. He further submitted that the active pharmaceutical ingredients in CANDID are a combination of clotrimazone and beta methasone dipropionate and that the product is used for the treatment of multiple fungal infections. He next submitted that the first respondent admittedly adopted and used the impugned trademark 'CANDEX-B' much later. According to him, such adoption and use is dishonest and that it was done with the mala fide intention of capitalising on the goodwill acquired by the appellant for the mark CANDID.

5. He also submitted that the trademark CANDID was declared as a well known trademark by the Bombay High Court in Suit No.182 of 2013 and the said mark is consequently entered in the regi