Case: CPC International, New Jersey, U.S.A. Vs Lilly Corporation, Amritsar. Trademark Tribunal

Party NameCPC International, New Jersey, U.S.A. Vs Lilly Corporation, Amritsar
CounselFor Appellant: Mr. P.B. Pai, Regd. Trade Marks Agent and For Respondents: Mr. A.K. Goel, Advocate
JudgesM. R. Bhalerao, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 11 (b), 18(1)
Citation1989 (9) PTC 118 (Reg)
Judgement DateNovember 15, 1988
CourtTrademark Tribunal

Judgment:

M. R. Bhalerao, DRTM

  1. On 16th January, 1982. Brij Kumar Dhir, trading as Lily Chemicals, G.T. Road, Putlighar, Amritsar (hereinafter referred to as "the Applicant") made an Application, being No. 385431 to register the trade mark "ENERGILE" (word per se) in respect of the specification of goods, which on subsequent amendment reads as. "dietetic food containing glucose." In his application the Applicant has claimed to have used his said trade mark since 1977. In due course, the Application was advertised before acceptance in the Trade Mark Journal No. 854 dated 1st January 1985 at page 640.

  2. On 25th March, 1985, CPC International Inc, a Corporation organized and existing under the laws of the State of Delaware International Plaza, Englewood Cliffs, State of New Jersey 07632, United States of America (hereinafter referred to as, "the Opponents") lodged a Notice of Opposition. Under Section 21(1) to the registration of the aforesaid trade mark on the grounds which are briefly as follows: -

  3. That the Opponents manufacture, export and deal in a wide range of diverse products; such as, food products and food compositions for humans, animals, infants and invalids, anhydrous and hydrate dextrose (medicinal for infants and invalids), syrups (pharmaceutical or medicinal), jellies and jams, edible oils and fats, food products and preserves containing glucose, starch and corn flour for edible purposes, baking powder and custard powder, cereal preparations and syrups used as food, syrups and concentrate for making beverages and non alcoholic beverages.

  4. That for part many years the Opponents have been trading extensively in several countries of the world including India.

  5. That the Opponents coined the word ENERGILE in 1979 and adopted it as a trade mark, after making searches in the records of the Trade Marks Registry and after making a thorough market enquiry that no such resembling mark was either registered, pending or in use.

  6. That on 17.5.79 the Opponents applied for registration of their trade mark ENERGILE for 'glucose powder' and for 'non-alcoholic beverages' and their Application have been respectively numbered as, 349240 and 349241.

  7. That the Opponents are the proprietors of the trade mark ENERGILE in respect of glucose powder' and 'non-alcoholic beverages.'

  8. That the Opponents object to the registration of the trade mark applied for, as it would be calculated to deceive or cause confusion in the course of trade or which would enable the Applicants' goods to be mistaken, sold or passed off as the Opponents' goods.

  9. That the trade mark ENERGILE, applied for in the impugned application, is the Opponents trade mark.

  10. That the goods for which registration is sought by the Applicant and the goods in the Opponents' Applications No. 349240 and 349241 are either of the same or of the same description.

  11. That the Opponents deny the use of impugned mark, as claimed by the Applicant, and that the same is ab-initio dishonest.

  12. That the description of goods, as stated in the Application, is misleading and it will cause confusion and deception in the course of trade.

  13. That the Applicants has never used the trade mark ENERGILE in respect of dietetic food containing glucose' and that he has no bona-fide intention of using it in relation to such goods.

  14. That the Applicant was well aware of the Opponents' trade mark and hence he cannot claim to be the proprietor thereof.

  15. That the use of trade mark applied for in relation to goods for which it is sought to be registered would read to confusion or deception as to the trade provenance of these goods, as the trade and public will assume a connection in the course or trade between the Opponents and the Applicant.

  16. That in view of the foreign, the registration of the trade mark applied for is prohibited under Sections 11(a), 11(b), 11(e), 18(1) and 9 of the Act.

  17. That this is a fit case for exercise of the registrar's discretion adversely to the Applicant.

  18. The Applicant filed his counter-statement on 7.8.85. Therein, he has stated that he adopted the trade mark ENERGILE in April, 1977 and his user is prior to that of the Opponents. He has further stated that his Application and the Opponents two Applications are in different classes. The Applicant has denied the allegations made by the Opponents in their Notice of Opposition.

  19. The evidence in support of opposition consists of one affidavit dated 17.6.86. by John B. Meagher. The evidence in support of application consists of one affidavit by Brij Kumar Dhir, along with copies of seventeen invoices. The evidence in reply consists of one affidavit dated 1.3.88. by John B. Meagher.

  20. The matter came before me for hearing on 2.8.1988. Shri P. B. Pai, Registered Trade Marks agent appeared fro the Opponents. Shri A. K. Goel, Advocate appeared for the Applicant.

  21. According to Section 11(a), a Mark the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. The Opponents' case under Section 11(a) is that...

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