Case: Shakti Vikas Sansthan, Aligarh Vs Ayurved Vikas Sansthan, Moradabad. Trademark Tribunal
| Counsel | For Appellant: Mr. S.K. Bansal, Advocate and For Respondents: Mr. Om Parkash Sharma, Advocate |
| Judges | Om Parkash, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Section 9 |
| Judgement Date | January 15, 1991 |
| Court | Trademark Tribunal |
Judgment:
Om Parkash, DRTM
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On 20.2.1984, M/s. Ayurved Vikas Sansthan, C-83, Gandhi Nagar, Moradabad, Uttar Pradesh filed an application, being Application No. 417986B for registration in the Trade Marks Registry under the trade mark 'Energic-31' (in English and Hindi language) on a single label in Class 5 in respect of 'ayurvedic medicines'. Certain objections were raised by Trade Marks Registry including of convertion of the said application in Part B of the Trade Marks Register vide TM-16 dated 11.9.87. After compliance of the objections, in due course, the application was ordered to be advertised in Journal No. 952 dated 1.2.1989 at page 1230.
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On 21.4.1999, M/s Shakti Vikas Sansthan, Post Box No. 120, Samad Road, Aligarh -- 202001, Uttar Pradesh (hereinafter referred to as "the Opponents") lodged a notice of opposition against the registration of the aforementioned trade mark on the grounds as given under:-
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That the opponent is a sole proprietory Firm of which Smt. Sushma Varshney is its sole proprietor who has been carrying on business of manufacturing ayurvedic medicines and has been using the trade mark 'SHAKTI ENERGY 500' label in respect thereof.
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That the opponent adopted the said trade mark on 16.9.87 and have been continuously using this mark since than upto the present time. The business of the opponent is a very extensive and the goods bearing the trade mark SHAKTI ENERGY 500 have been practically distributed in major parts of the country.
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That the trade mark SHAKTI ENERGY 500 has become distinctive and associated with the goods of the opponents on account of its long, continuous, extensive and exclusive user and the public at large identifies the said mark with the said goods of the opponents.
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That the trade mark of the opponent has been advertised in newspapers, trade magazines, distribution of trade literature, sign boards, display boards and also through distribution of trade novelties. Thus, the opponents has spent substantial amount on the publicity and as a result of which the said trade mark enjoys solid enduring reputation in the markets.
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That in order to acquire statutory rights for the said trade mark the opponents has filed an application for its registration under No. 478225 in class 5 in the Trade Marks Registry. The application in question is still pending and is likely to be accepted in due course of time.
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That the trade mark 'ENERGIC-31' (label of the applicants) of which the word Energic is forming a material part is equivalent to the laboratory word 'ENERGY' and thus the applicants' mark is not adopted to distinguish the goods within the meaning of Section 9 of the Act.
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That by reason of the use of the opponents' trade mark, the use of the applicants' trade mark is likely to deceive or cause confusion and accordingly the registration of the mark would be contrary to the provisions of Section 11(a) of the Act.
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That the goods for which the applicant is seeking registration are identical with those of the opponents and as such if the applicant is allowed to registration or use the trade mark there would be deception to the public and injury to the Opponents' trade and business.
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That the applicant has made several material mis-statements in connection with the use of the mark and that such statements were not due to genuine mistake but were made with the intention to get improper advantage or for other ulterior motives. The applicant is not the proprietor of the mark applied for. The applicant adopted the trade mark applied for dishonestly and fraudulently knowing it well that it is the well known trade mark of the opponent.
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That by virtue of the facts and circumstances mentioned in the notice of opposition, the application should be refused in the exercise of the Registrar's discretion under Section 18(4) of the Act.
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That the registration of the mark applied for is barred under sections 9, 11(a) and 12(1) and 18 of the Act.
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On 1.11.1989, M/s Ayurved Vikas Sansthan (hereinafter referred to as "the Applicant") filed the counter-statement denying all the material averments, whatsoever, contained in the notice of opposition on the grounds as given below:-
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That the applicant adopted the trade mark 'ENERGIC-31' in the year 1980 and since then the same is being used openly, honestly and extensively and this mark has been advertised through the various medias, namely, stickers, display on boards, cinema slides, newspapers, wall paintings and through All India Radio etc. The applicant has also offered novelties given trade discount for increasing and promoting sales and demand of his products under the trade mark applied for.
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That an application under No. 368513 was filed on 13.11.80 for registration of the said trade mark 'ENERGIC-31' but this application was abandoned as the trade was new on the date of the application and the objection could not be removed under Section 9 of the Act. After the extensive use and huge advertisement, the applicant moved a fresh application under No. 417986 on 20.2.1984.
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That from the date of adoption, the mark applied for has been extensively used, heavily advertised and this mark is in heavy demand, the public and trade recognise the medicines under this trade mark as product of the applicant's Firm. By virtue of long user and publicity the trade mark "EMERGIC-31" in respect of ayurvedic medicines has become a valuable assest of the Applicant Firm and is entitled to registration on account of honest adoption, continuos and extensive use and the mark applied for has become distinctive.
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That in November, 1987, the applicant served a legal notice on Shakti Vikas Sansthan C/o Lalit Medical Store, Phapala, Aligarh, U.P. since the complete address was not available. The applicant's received a letter from Lalit Medical Agency Aligarh and the applicant's attorneys received a reply from Delhi Registration Service, Khari Baoli, Delhi on behalf of Shakti Vikas Sansthan.
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That the counter-statement is also accompanied by Annexures as A-1 to A-3 in regard to the correspondence held with the opponents. The opponent has to make out a case for the refusal of the application in question in terms of Sections 9, 11(a), 12(1), 18(1) and 18(4) of the Act. The present opposition has been filed only to delay the registration and to put a hurdle in a way to take legal action against the opponent, such a false fictitious and motivative opposition be dismissed with cost.
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The opponent vide his letter dated 6.3.90 notified to Tribunal that the opponent does not wish to file evidence under Rule 53 in support of the opposition and intend to rely upon the statements and facts mentioned in the notice of opposition and on office records. Vide paragraph 2 of this letter the applicant has also been communicated accordingly.
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On 5.7.90, the applicant filed evidence in support of application under Rule 54 which consists of an affidavit dated 28.6.90 in the name of one Mr. Jitendra Kumar Goel, Sole Proprietor of the applicant Firm. This affidavit has been accompanied by Annexures A-1 to A-2.
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On 16.7.90, the opponent filed evidence in reply under Rule 55 which consists of an affidavit dated 7.7.90 in the name of one Smt. Sushma Varshney, Proprietor of the Opponent's Firm.
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Upon completion of the evidence as afore-mentioned, the matter was set down for hearing before me on 7.12.90 when Ld. Counsel, Shri Sharvan Kumar Bansal appeared on behalf of the Opponent and Shri O.P. Sharma, Ld. Counsel appeared on behalf of the applicant.
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The Ld. Counsel, Shri S.K. Bansal, contended that the opponent had adopted his mark on 16.9.87 and since then it has been in continuous and extensive use. The Opponent's mark is identified and recognised in respect of the opponent's goods, thus, it has attained reputation in the market. He further submitted that the applicant's mark "Energic 31" allegedly adopted in the year 1980 in respect of "ayurvedic medicines" has not been proved by way of production of documentary evidence in support of his claim as proprietor of the mark applied for. The mark applied for is inherently incapable of distinguishing the goods within the provision of Section 9 of the Act. It is true that several manufacturers of medicines and pharmaceutical preparations are using the word 'Energic' for the purpose of describing the nature of their medicines as such which are...
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