Case: American Home Products Corporation, New York Vs Mini Pharma, Ahmedabad. Trademark Tribunal

CounselFor Appellant: Mr. T.N. Daruwala, Advocate and For Respondents: Mr. R.R. Shah, Advocate
JudgesM. C. Gupta, ARTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 11(a), 12(1), 12(3), 18(1), 18(4)
Citation1992 (12) PTC 44 (Reg)
Judgement DateJanuary 03, 1992
CourtTrademark Tribunal

Judgment:

M. C. Gupta, ARTM.

  1. The registration of the word "PARIN", the subject matter of the above given application No. 460538 dated 23rd September, 1986 in class 5 for the specification of goods read as "pharmaceuticals & medicinal preparations" filed by the above given applicants, is being objected to the registration by way of filing a notice of opposition on form TM-5 dated 29th December, 1989 by the above given opponents. This application was advertised before acceptance in Trade Mark Journal No. 966 dated 1st September, 1989 at page 675. The opponents objections are as follows:

    (a) That the opponents are the Registered Proprietors in India of the trade mark "SPARINE" dated 2nd September, 1958 under No. 186719 in class 5 for the specification of goods reading as "Medicinal preparation containing the drug promazine hydrochloride for use as a tranquillising agent to be sold only on the prescription of a registered medical practitioner'.

    (b) That the opponents are using their mark through their registered user M/s. Geoffrey Manners & Co. Ltd. (an Indian Company) since 1958.

    (c) That the use of the applicants impugned mark "PARIN" is likely to deceive or cause confusion having regard to the reputation and use of the opponents registered mark "SPARINE" and as such registration of the applicants impugned mark is prohibited under Section 11(a) of the Act.

    (d) That the goods under the rival marks are some or of the same description and therefore registration of the impugned mark is prohibited under Section 12(1) of the Act.

    (e) That the alleged use of the applicants mark is neither honest nor concurrent so as to claim the benefit under Section 12(3) of the Act.

    (f) That the use of the applicants mark is disentitled to protection in a court of justice within the meaning of the Section 11(e) of the Act.

    (g) That the applicants cannot claim the proprietory rights in the impugned mark in terms of Section 18(1) of the Act.

  2. Lastly the opponents requested for the exercise of discretion vested in this Tribunal under section 18(4) of the Act, adverse to the applicants keeping in view the interest of the public, the trade and the medical profession and also having regard to maintaining the "purity" of the Register.

  3. In their counter statement filed on 8th June, 1990 the applicants denied all the averments of the Opponents and stated that the impugned mark is being used by them since 5th June, 1981 throughout the country. The applicants denials are nothing but parrot-like denials, denying even all the bare facts of the case.

  4. Evidence under Rule 53 of the opponents consists of an affidavit of Sharad Thakorbhai Patel, Vice President (Finance) of John Wyeth (India) Ltd. dated 13th December, 1990 alongwith Exhibit "A" (Annual sales figures of the goods bearing trade mark "SPARINE" from 1961-1990), Exhibit "B" (Annual figures of...

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