Case: C.E. Fulford (India) Private Limited Vs Sterfil Labortories. Trademark Tribunal
| Counsel | For Appellant: Mr. C. M. Maniar, Advocate of Crawford Bayley & Co. and For Respondents: Mr. N. B. Jhaveri, instructed by Shah and Shah, Advocate |
| Judges | C. S. Rao, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 12(1), 18(1), 18(4) |
| Citation | 1982 (2) PTC 147 |
| Judgement Date | May 30, 1980 |
| Court | Trademark Tribunal |
Judgment:
C. S. Rao, DRTM
The applicants filed a counter-statement denying all material averments in the Notice of Opposition. They asserted in particular that they honestly adopted TOLNADERM by coining the first part TOLNA from TOLNAFTATE which is the principal ingredient of their pharmaceutical preparation and adding thereto the suffix DERM, meaning skin, which is being commonly used as a suffix by pharmaceutical trade in coning trade marks. Applicants further contended that they got a search made by the Trade Marks Registry and obtained a clean "nil" report about conflicting marks and thereafter applied for registration of their mark. It was further alleged by Applicants that besides there being no conflict between the rival marks Opponents are in fact non-registered proprietors of TINADERM as falsely claimed by them and that accordingly Opponents have no locus standi to file this opposition.
Opponents filed an affidavit of their chief accountant, M. V. Patwardhan, as evidence in support of opposition, while Applicants filed an affidavit of their partner, Dr. Jayantilal L. Patel, as evidence in support of application. Thereupon Opponents tendered one more affidavit of M. V. Patwardhan as evidence in reply.
Issues in these proceedings arise under sections 9, 12(1), 11(1), II(a), 11(e) and 18 of the Act.
As regards the issue under section 9, except for a bare allegation in para 6 of the notice of opposition that Applicants' mark is not distinctive under section 9, Opponents have not clarified their plea as to how and why Applicants' mark is not distinctive. Applicants on the other hand claimed that they honestly the mark TOLNADERM by taking TOLNA from TOLNAFTATE, an essential ingredient of their pharmaceutical preparation, and adding thereto DERM which means skin and which is used as a common suffix by the pharmaceutical trade while coining trade marks. In support of the above pleas Applicants filed printed literature and cartons showing TOLNAFTATE as the main ingredient of their pharmaceutical preparation. Applicants also furnished in Exhibit -- D a list of several trade marks containing DERM as a common suffix. DERM is a dictionary word meaning skin and it is interesting to note that even Opponents admitted at para 15 of their reply affidavit that DERM is a common descriptive suffix in respect of medicinal marks. In view of all the foregoing it is clear that TOLNADERM is a mark newly coined by the Applicants and containing a distinctive combination of the term TOLNA (derived from TOLNAFTATE) and the suffix DERM Applicants got a search made by the Trade Marks Registry and obtained a search report showing no conflicting marks to TOLNADERM. Hence it is obvious that TOLNADERM is a newly coined word which can be regarded as an invented word.
In the celebrated Solio case (15 R.P.C. page 476) decided by the House of Lords, Lord Herschell defined an invented word as a word "which is newly coined and has never therefore been used". The noble Lord added that the quantum or degree of invention is immaterial and Lord Mc Naughten went a step further and declared that it is no objection even if the word contains a cover and skilful allusion to the character and quality of goods and it is not necessary that it should be wholly meaningless. Accordingly Applicants' mark TOLNADERM squarely falls within the definition of an invented word and as such it shall be deemed to be prima facie inherently distinctive under section 9(1)(c). No doubt Applicants filed some evidence to establish even a factual distinctiveness for their mark on the basis of huge sales figures etc. but this factual aspect relates to a period subsequent to the date of application and I need not give any weight to the same. It would suffice for me to note that Applicants' mark, being an invented word, can be regarded as prima facie inherently distinctive within the meaning of section 9, whether or not supported by user on the date of application. Accordingly I overrule the Opponents' objection under section 9.
Now passing to the issue under section 12 (1), two points arise for consideration, namely (1) whether the rival marks are identical or deceptively similar and (2) whether the goods under rival marks are the same or of same description. The second...
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