S. Usha, J
1. The applicant is in the business of manufacturing, trading/dealing and exporting a wide range of medicinal and pharmaceutical preparations since
several years. The applicant adopted and used the trade mark ""SUSTEN"" in respect of medicinal and pharmaceutical preparations since the year 2000
openly, continuously and extensively. They have spent considerable amount for sales promotional activities. They have effected huge sales.
2 . The applicant had entrusted the manufacturing activity to M/s. M.J. Pharmaceuticals and they were manufacturing the products bearing the trade
mark ""SUSTEN"" with the permission of the competent authorities. The applicants trade mark ""SUSTEN"" was registered under No. 932166 in Class 5
as of 16.06.2000. The trade mark ""SUSTEN"" had acquired substantial reputation and immense goodwill among the public. By virtue of prior,
continuous use of the mark by the applicant as well as extensive business under the trade mark ""SUSTEN"" the said trade mark has come to be
associated only with the applicant and with none else. The trade mark has attained the status of a well known mark by actual and extensive use, wide
publicity and continuous and extensive use.
3. The respondents had filed a Civil Suit before the District & Sessions Court, Jalna, Maharashtra and obtained an injunction order against the
applicants which was subsequently vacated. The respondent had filed an appeal against the order of vacation and the same is pending. The applicants
have obtained an order of stay of the Civil Suit.
4. The applicants have filed this rectification application on the ground that the entry is wrongly remaining on the register, the registration is in violation
of Section 9 of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act'), the impugned trade mark was not distinctive of the goods, the
registration was not obtained in good faith, the trade mark was not used in respect of the goods for which it was registered, there was every possibility
of confusion being caused by the use of the impugned trade mark and the respondent is not the proprietor of the trade mark.
5 . The respondent filed their counter statement stating that the respondent is the prior adopter and user of the trade mark ""SUSTAINE"" since 2001.
The rectification application has been filed as a counter blast to the suit filed by the respondent. This application is devoid of merits, misconceived and
ought to be dismissed. The rest of the averments were denied by the respondent.
6 . We have heard Mr Amit Jamsahdekar, the learned Counsel for the applicant on 29.11.2011.
7 . Despite service of notice there was no appearance on behalf of the respondent.
The respondent was therefore set ex parte.
8 . The learned Counsel for the applicant submitted that they adopted and used the trade mark ""SUSTEN"" since August 2000. They applied for and
obtained registration as of 16.6.2000. They obtained drug licence on 9.8.2000. The respondents applied for registration of the trade mark on 11.5.2001
as proposed to be used. They had not used the trade mark even in the year 2005 when they filed the Civil Suit against the applicant. The Counsel then
submitted that if the respondent had made a search would have known that the applicants trade mark ""SUSTEN"" which is deceptively similar to the
respondent's trade mark ""SUSTAINE"" is already on the register. The Counsel then relied on the judgments -
(i) 2007 (3) SCC 780 - Meghraj Biscuits Industries Limited, Appellant Vs. Commissioner of Central Excise, U.P., Respondent
(ii) 1977 IPLR 83 - Mohan Goldwater Breweries (Private) Limited, Appellant Vs. Khoday Distilleries Private Limited & Another, Respondent
9 . We have heard and considered the applicant's arguments and have perused the pleadings and we have also considered the counter statement filed
by the respondents.
10. The application for rectification has been filed by the applicant as an aggrieved person. The applicant is a person aggrieved as a Civil Suit has been
filed by the respondent for an order of injunction restraining them from using the trade mark ""SUSTEN"" against the respondents trade mark
SUSTAINE"". The application i therefore maintainable.
11 . The respondent though did not appear had filed their counter statement. On perusal of the same it is seen that they had adopted and used the
trade mark ""SUSTAINE"" in the year 2001. But the application for registration has been filed on 11.5.2001 as proposed to be used. The respondent has
not filed any document to support their use. In the order passed by the II Additional District Judge, Jalna in R.C.S. No.01/2005, the learned Judge has
observed that the plaintiff, i.e., the respondent prima facie failed to prove that he has actually started his business and manufacturing pharmaceuticals
and medicinal preparations. Therefore, it is not clear as to whether the respondent has been using the trade mark after registration. When there is no
evidence placed before us, we will have to conclude that there has been no use by the respondent.
12. The applicants claim use of the mark ""SUSTEN"" since the year 2000 whereas the respondents claim use of the mark ""SUSTAINE"" since the year
2001. The rival marks ""SUSTEN"" and ""SUSTAINE"" in our view are deceptively and phonetically similar. In medicinal products the authorities
concerned are to be more cautious while granting registration. The applicants are prior in adoption and use and have placed certain evidence to prove
their use. The settled principle is that priority prevails over the registered proprietor.
13. When the marks are considered to be similar in respect of identical goods, there is every possibility of confusion being caused among the public.
The registration is therefore in contravention of the provisions of the Act.
14. For the above said reasons, the rectification petition ORA/139/2006/TM/MUM is allowed with a direction to the Registrar to remove the trade
mark ""SUSTAINE"" registered under No. 1008872 in Class 5 from the register of Trade Marks. No order as to costs. M.P. No. 63/2008 is closed.
