Application Nos. 1519058 & 1533235 and Opposition Nos, Cal-727834 & Cal-727835. Case: Dr. Sain's Laboratories Vs Wyeth (formerly known as American Home Products Corporation) at Five Giralda Farms. Trademark Tribunal

Case Number:Application Nos. 1519058 & 1533235 and Opposition Nos, Cal-727834 & Cal-727835
Party Name:Dr. Sain's Laboratories Vs Wyeth (formerly known as American Home Products Corporation) at Five Giralda Farms
Counsel:For Appellant: Mr. A. M. Saha, Advocate and For Respondents: Mr. T. N. Daruwalla, Advocate
Judges:S. B. Palo, Sr. Examiner of Trade Marks
Issue:Trade Marks Act, 1999 - Section 11
Citation:2011 (46) PTC 48
Judgement Date:September 29, 2010
Court:Trademark Tribunal
 
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Order:

S. B. Palo, Sr. Examiner of Trade Marks

  1. This order will dispose of the aforesaid two oppositions lodged by the same Opponents against the same Applicants for identical trade mark. The evidence and other issues in both the cases are same and similar and it was also agreed by the learned advocates for both the parties that one order may be passed in both the cases. The brief facts of the cases are as under:-

    Application No. 1519058 in class 5 was filed for registration of a trade mark 'ZY-MOX' by the above named Applicant on 11th January, 2007. The mark was claimed to be used since 10th February, 1998. Eventually, the application was ordered to be advertised before acceptance for registration and advertised as such under proviso to Section 20(1) of the Trade Marks Act, 1999 in the Trade Marks Journal No. 1393 Regular dated 1st June, 2008 at page No. 867. Similarly, Application No. 1533235 was filed for registration of the word 'ZY-MOX' for the goods "Medicinal and pharmaceutical preparations" on 22nd February, 2007 with a claim of use since 10th February, 1998. Eventually, the application was ordered to be advertised before acceptance for registration and duly advertised as such vide Trade Marks Journal No. 1392 Regular dated 16th May, 2008 at page No. 855.

  2. On 241 July, 2008, the above named Opponents filed two notices of opposition against both the trade marks of the Applicants objecting to the registration of the same on the following grounds:-

    (1) That American Home Products Corporation whose corporate name has been changed with effect from 11th March, 2002 to Wyeth (hereinafter referred to as "the Opponents") are reputed manufacturers of pharmaceutical and medicinal preparations, animal health products; consumer health care preparations including vitamins and nutritional preparations; infants' and invalids' formulas and preparations;

    (2) That the Opponents are the registered proprietors of the trade mark 'WYMOX in India under Trade Mark No. 425016 in respect of medicinal and pharmaceutical preparations in class 5. They are using the said mark since 30th July, 1984 and have acquired tremendous reputation and goodwill amongst the members of the public, the trade and the medical professions in India who associate the trade mark 'WYMOX' exclusively with the Opponents and their registered users;

    (3) That the impugned trade mark applied by the Applicants ii, visually, structurally and phonetically deceptively similar to the trade mark 'WYMOX' of the Opponents. Therefore, registration of the impugned mark which is deceptively similar to the Opponents' mark, is likely to cause deception and confusion during the course of trade and hence prohibited for registration under Section 11 of the Act;

    (4) That the very adoption of the impugned mark by the Applicants is dishonest and fraudulent coupled with mala fide intention on its part to trade upon and benefit from the goodwill and reputation enjoyed by the Opponents in their worldwide famous mark;

    (5) That the Opponents' registered trade mark is a well-known trade mark and, therefore, the impugned mark is prohibited for registration under Section 11 of the Act;

    (6) That the impugned marks of the Applicants cannot be distinctive of its goods and hence it does not qualify for registration in terms of Section 9 of the Act.

  3. The Opponents took objections to the registration of the impugned mark under Sections 9, 11 and 18 of the Act and also prayed for exercise of discretion of this Tribunal adverse to the Applicant under Section 18(4) of the Act.

  4. In his counter-statement filed on 7 January, 2009, the Applicant denied the various averments of the Opponents and stated that the impugned marks are being used by him since the year 1998 honestly adopting the same. The Applicant adopted the word 'ZY-MOX' and coined the same in the year 1998 and put in use in respect of medicinal and pharmaceutical preparations and has acquired sufficient reputation and goodwill and the general public associate the said mark with that of the Applicant's business exclusively. The Applicant has categorically denied the averments made by the Opponents in their notice of opposition.

  5. After completion of evidence as per the rules, the matter was set down for hearing which took place on 29th July, 2009 and concluded on 10th August, 2009 in presence of Mr. T.N. Daruwalla, Advocate for the Opponents and Mr. A.M. Saha, Advocate for the Applicant.

  6. Mr. T.N. Daruwalla, learned advocate for the Opponents submitted that the very adoption of the trade mark 'ZY-MOX' which is visually, structurally and phonetically deceptively similar to the trade mark 'WYMOX' of the Opponents with a view to trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents in their registered trade mark. He stated that the Opponents are the registered proprietors in India of he trade mark 'WYMOX' bearing No. 425016 in class 5 in respect of medicinal and pharmaceutical preparations. The said mark has been duly renewed from time to time and the same is valid and subsisting. The Opponents have filed their evidence in support of opposition by way of an affidavit of Ms. Neema Thakore and Mr. Bret I. Parker alongwith invoices. The Opponents have categorically stated that they have entered into a registered user agreement with John Wyeth (India) Limited, a company incorporated in India. Accordingly, an application...

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