Case: Himalayan Drug Co., Bombay Vs Herbals (APS) Private Ltd., Patna. Trademark Tribunal

CounselFor Appellant: Mr. M.S. Daswani, Advocate and For Respondents: Mr. J.S. Sarkar, Advocate
JudgesOm Parkash, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 11(e), 12(1), 18(1), 54
Judgement DateMay 21, 1990
CourtTrademark Tribunal

Judgment:

Om Parkash, DRTM.

  1. On 2nd August, 1982 M/s. Herbals (APS) Private limited, B.M. Das Road, Patna-800004, Bihar (hereinafter referred to as "the applicants") made an application being application No. 393722 for registration of a trade mark consisting of a label containing the word 'SPEMATONE' in Devnagari character in respect of "Ayurvedic medicinal preparations" in class 5. After some objections raised by the Trade Marks Registry the mark was ordered to be advertised as accepted and accordingly it was advertised in the Trade Mark Journal No. 870 dated 1.9.1985 at page 337.

  2. On 30th December, 1985 M/s. The Himalaya Drug Co, Shivsagar 'E', Dr. A. B. Road, Worli, Bombay-400018 (hereinafter referred to as "the opponents") lodged a notice of opposition to the registration of the aforesaid trade mark. The grounds of opposition as contained in the notice of opposition are given as under:

  3. That the opponents have been carrying on business as manufacturers of/and dealers in Ayurvedic medicinal preparations and substances. They are the registered proprietors of the mark 'SPEMAN' which is registered under No. 177271 as of 24-11-1956 in class 5 in respect of "medicinal preparations"

  4. That the opponents have been using the said mark since 1956 continuously and very extensively throughout India since 1956 and resultantly the mark has acquired good reputation, goodwill and has become distinctive and exclusively identified in the minds of the public with opponent's goods and their merchandise.

  5. That the goods under the mark "SPEMATONE" in Devnagari script is deceptively similar to the opponents mark 'SPEMAN". The goods under the rival marks are the same such as "Ayurvedic medicinal preparations". The channels of sale/trade and class of purchasers are also the same.

  6. That adoption of the applicants' mark is dishonest and it was evidently adopted by them with the knowledge of opponents' reputed registered mark and so as to trade upon and take advantage of reputation of opponents' mark. Therefore, applicants' mark is disentitled to protection in the court of law.

  7. That the opponents have filed an Opposition No. CAL-1364 to the registration of the associated trade mark "SPERMATONE" of the application No. 327804 which was advertised in Trade Marks Journal No. 716 dated 1-4-1979. They have also filed a suit in the High Court of Bombay being Suit No. 2125/1981 for infringement and passing-off their trade mark "SPEMAN' by applicants.

  8. That "SPEMANTONE" is neither distinctive nor capable of distinguishing the goods and claim of user of the mark is dishonest and void ab initio.

  9. That the registration of the mark is liable to be refused in the exercise of Registrar's discretion. The registration of the mark is contravened within the provisions of sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act.

  10. On 23rd April, 1986 the applicants filed a counter-statement denying all the material averments/allegation whatever contained in the notice of opposition. The applicants relied on the following grounds for the registration of their mark.

  11. That the applicants are the registered proprietors of the mark 'SPERMATONE" under No. 236887 as of 26.3.1973.

  12. That with effect from 1.9.1979 they are manufacturing and selling the same preparations as of 'SPERMATONE' under 'SPEMATONE', since they had to slightly modify the trade mark on the advice of the Drug Controller.

  13. That they filed a trade mark application to register 'SPEMATONE' in English under No. 327804 as on 2.8.1977 which was accepted by the Registrar of Trade Marks.

  14. That thereafter the Devnagari Characters of the English version 'SPEMATONE" which was also adopted since the year 1976, was also applied for under No. 393722 which is the subject of the present opposition.

  15. That the mark 'SPEMATONE' in Devnagari script cannot be deceptively similar to the opponents' alleged mark 'SPEMAN' in English script.

  16. That applicants' goods are in respect of the goods being Ayurvedic medicinal preparations which are identified by the purchasing public under their mark 'SPEMATONE' (in Hindi character) since the marks are readily distinguishable from each other. Devnagari script will not in any way cause confusion or deception as alleged.

  17. That the mark applied for SPERMATONE' to 'SPEMATONE' was altered on the directions of the Deputy Drug Controller, India. Therefore, question of dishonesty does not arise.

  18. That the registration of applicants' mark is not contravened within the provisions of section 9, 11(a), 11(e), 12(1) and 18 (1) of the Act.

  19. On 5th August, 1986 the opponents filed the evidence in support of opposition under Rule 53 (1) of the Trade and Merchandise Marks Rules, 1959...

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