The principle of acquiescence under Section 33 of the Trade Marks Act bars a prior user from claiming rights after allowing a similar mark's use for over five years, especially when the prior mark's registration has expired.

ORDER :

(Abdul Quddhose, J.)

(Prayer: This petition is filed under Sections 57/125 of the Trade Marks Act, 1999, seeking to remove the entry made in respect of trademark number 955510 of September 13, 2000, for the mark 'DOLOBENE' in class 05 from the Register.)

This petition has been filed under Section 57 of Trade Marks Act, 1999 (in short “the Act”) seeking to rectify the Trade Mark registration obtained by the 1st respondent in respect of the Trade Mark 'DOLOBENE'. According to the petitioner, the said Trade Mark 'DOLOBENE' is deceptively similar to that of the applicant's trade mark 'DOLOBAN'.

2. The following are the undisputed facts:

a) The petitioner and the 1st respondent are both Pharmaceutical Companies. The petitioner obtained Trade Mark Registration for its mark 'DOLOBAN' in the year 1994 and while obtaining registration, the petitioner had disclosed that they have been using the mark 'DOLOBAN' from the year 1993.

b) The registration of the petitioner's mark 'DOLOBAN' under the Trade Marks Act got expired on 03.02.2004. The petitioner did not renew the registration for a further period under the Trade Marks Act, 1999.

c) The 1st respondent who is also in the pharmaceutical business of manufacturing pharmaceutical products obtained Trade Mark Registration for its Trade Mark 'DOLOBENE' in the year 2004. While applying for Trade Mark Registration for 'DOLOBENE' in their application, they had disclosed that they have been using the said Trade Mark since the year 2000.

d) The petitioner in the year 2007 filed a fresh Trade Mark application for its Trade Mark 'DOLOBAN'. In the fresh application, the petitioner had claimed once again that they have been using the mark 'DOLOBAN' since 01.04.1993.

e) An opposition petition was filed by the 1st respondent before the Trade Marks Registry opposing the grant of registration for the petitioner's mark 'DOLOBAN'. The said opposition petition is still pending.

f) The petitioner has not raised any dispute with regard to the usage of other 'DOLO' series of marks by the 1st respondent, but restricts its opposition/objection only to the usage of the Trade Mark 'DOLOBENE' by the 1st respondent.

3. The learned counsel for the petitioner would submit that the petitioner is a prior user of the Trade Mark 'DOLOBAN' as the petitioner has been using the said Trade Mark from 1993 onwards, whereas, the 1st respondent even as per its own application seeking for registration of their trade mark claims that they have been using the Trade Mark only from the year 2000. Therefore, according to the learned counsel for the petitioner, the petitioner, as a prior user of the Trade Mark and due to the petitioner's contention that the 1st respondent's Trade Mark is deceptively similar to that of the petitioner's Trade Mark, the petitioner is entitled to seek for rectification/cancellation of the 1st respondent's Trade Mark as per the provisions of Section 57 of the Trade Marks Act, 1999.

4. The learned counsel for the petitioner would also submit that since the petitioner and the 1st respondent are both in the Pharmaceutical business and the Trade Marks which are the subject matter of dispute are being used in the pharmaceutical industry, the usage of the Trade Mark 'DOLOBENE' by the 1st respondent will cause confusion in the minds of the consumers and therefore, the Trade Mark Registration obtained by the 1st respondent for the Trade Mark 'DOLOBENE' has to be cancelled under Section 57 of the Trade Marks Act.

5. The learned counsel for the petitioner also drew the attention of this Court to the opposition petition filed by the 1st respondent to the second Trade Mark Registration application submitted by the petitioner in the year 2007 and would submit that the 1st respondent has admitted that there is deceptive similarity between the petitioner's Trade Mark and the 1st respondent's Trade Mark and therefore, having admitted deceptive similarity, the question of seeking for Trade Mark registration by the 1st respondent