Case: Anglo French Drug Company Eastern Limited, Bombay Vs Aphali Pharmaceuticals Limited, Bombay. Trademark Tribunal

Party NameAnglo French Drug Company Eastern Limited, Bombay Vs Aphali Pharmaceuticals Limited, Bombay
CounselFor Appellant: Mr. Bharatan of Crawford Bayley & Company, Advocate and For Respondents: Mr. Mohan Dewan, Advocate
JudgesK. C. Kailasam, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11, 12(1), 18
Citation1982 (2) PTC 15
Judgement DateSeptember 30, 1981
CourtTrademark Tribunal

Judgment:

K. C. Kailasam, DRTM

On 14th January, 1977, Aphali, Pharmaceuticals Limited, Sangli Bank Buildings, IVth floor 296 P. Nariman Street, Bombay-1, (hereinafter referred to as `the Applicants'), filed an application to register a trade mark consisting of the word OPTRIN in class 5 in respect of a specification of goods, which are amendment reads as `Pharmaceutical & medicinal preparations for opthalmic use (eye drops)'. The application was advertised before acceptance under section 20(1) of the Trade and Merchandise Marks Act, 1958 in the Trade Marks Journal No. 703 dated 16.9.1978 at page 435.

A notice of opposition was filed by the Anglo French Drug Company `Eastern' Limited, 28 Tardeo Road, Bombay-38 (hereinafter referred to as `the Opponents,' mainly on the following grounds:-

that the opponents are the proprietors of the trade mark consisting of the word `OPTYL, registered under No. 25310174 in class 5 in respect of `Pharmaceutical preparations for external use of eye, ear and nose ';

that the trade mark `OPTYL' has been used in India in relation to Pharmaceutical preparations for the past several years;

that by reason of long and extensive use in India the said trade mark has acquired a great reputation and has come to be associated exclusively with the Opponents and their products;

that the trade mark applied for consisting of the word `OPTRIN' per se is deceptively similar to the opponents' said trade mark. The trade mark applied for is, therefore, prohibited from registration under the provisions of Section 12 of the Act and

that the trade mark applied for does not qualify for registration under the provisions of section 9 of the Act.

A counter statement was filed by the applicants on 21.2.1978 denying the allegations of the opponents contained in the notice of opposition and contending that the prefix OPT in the applicants' mark is a common in the pharmaceutical trade. Evidence in support of the opposition consists of an affidavit dated 24.1.1979 of Mohan Mangesh Wagh, Secretary of the Opponents' Company. The Evidence in support of the application consists of an affidavit dated 27.2.1981, of Wilfred Marius Desouza, Manager of the Applicants' Company. The evidence in reply is by way of an affidavit dated 11.5.1981 of the aforesaid Mohan Mangesh Wagh of the Opponents' Company.

The matter came up before me for hearing on 15.9.1981 when Shri Bharatan of Crawford Bayley & Company appeared for the opponents and Shri Mohan...

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