Case: P. Banerji Minijam, Calcutta Vs Syrup Thio Kof Manufacturing Co. (India), Bombay. Trademark Tribunal
| Counsel | For Appellant: Mr. V.H. Mehta, Advocate, instructed by S.N. Banerji, Regd. Trade Marks Agent and For Respondents: Mr. V.F. Shah, Advocate, instructed by M/s. Shah & Shah, Bombay |
| Judges | M. C. Gupta, ARTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 11(a), 12(1), 18(1), 18(4) |
| Citation | 1989 (9) PTC 89 (Reg) |
| Judgement Date | December 30, 1988 |
| Court | Trademark Tribunal |
Judgment:
M. C. Gupta, ARTM
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A notice of Opposition on Form TM-5 was filed on 1.4.1985 opposing the registration of trade mark MALAXIN, which forms the subject-matter of Application No. 390640 in class 5 filed by Jaylal Parmanand Dadhia and others trading as M/s. Syrup Thio Kof Manufacturing Co. (India) of Dadhia Niwas, Paranjape B. Scheme, Road No. 4, Vile Parle (E), Bombay-400-057, this application was advertised before acceptance under section 20 (1) (Proviso) vide Journal No. 855 for the specification of goods to read as "Pharmaceutical and medicinal preparation". The mark was proposed to be used on the date of application i.e. 31-5-1982.
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The opponents grounds of objection to the registration of trade mark in the above given application are as under:
That the opponents have been carrying on an old and established business since 1918 onwards and they are the manufacturers and dealers in homeopathic medicines and various other medicinal produces prepared from indigenous herbs and substances.
That one of the trade marks used in the opponents business is LEXIN (work per se) and that they are the Registered Proprietors of this trade mark under Application No. 4756 dated 4-9-1942 in class 5 in respect of specification of goods Pharmaceutical medicinal and veterinary preparations and more particularly preparations for the treatment of snake bite, sea sickness, opium poisoning, scorpion bites, cholera coma, shock, asthema, collapse, bleading, sinsetroeis (shell shock), bubanic plague, typhus and sulphanilamide reactions used principally as an inhalation or injection, but excluding pharmaceutical laxative preparations and goods of the same description as the last."
That the above said trade mark of the opponents is still valid and subsisting and that the said trade mark LEXIN has always been applied in relation to a medicinal specific. Which is a remedy for snake bite and scorpion bite.
That the opponents have spent considerable amount on publicity on their brand name LEXIN and the curative droperties of the product 'LEXIN' in treatment of cases of snake bite.
That because of its proven healing qualities, trade mark LEXIN has come to be regarded as an indispensable house-hold remedy in India, specifically for snake bites.
That the opponents are using this trade mark extensively for the last over five decades and, therefore, brand name LEXIN has come to be associated exclusively with the product of the opponents and thereby enjoys considerable goodwill, and, thus a valuable asset to the opponents.
That the applicants mark MALAXIN is not registrable under Section 9, being not distinctive, and that the registration of the applicants mark will contravene the provisions of Section 11 (a) and 11 (e) of the Trade & Merchandise Marks Act, 1958.
That the registration of the applicants mark is prohibited under Section 12 (I) of the Act being deceptively similar to the opponents mark LEXIN and also because the rival marks are for the similar goods.
That the applicants are not entitled to the proprietory right in...
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