Z.S. Negi, J
1. This is an application under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for the removal by a total
expunction of trade mark No. 1109280 in class-5 from the Register of Trade Marks. During the pendency of the application, the applicant has filed a
miscellaneous petition, being M.P.No. 112/2007, seeking for condonation of delay in filing its reply to the counter-statement.
2. The applicant, a private limited company, is engaged in the manufacturing of and dealing in pharmaceutical and medicinal preparations. The
applicant honestly coined and adopted the trade mark DROTIN in or about February, 1997 and obtained registration thereof under No. 732349 as of
3.2.1997 in class-5 in respect of medicinal and pharmaceutical preparations, which trade mark is valid and subsisting. The sale of applicant's goods
bearing the trade mark DROTIN commenced in 1997 and the applicant has spent substantial amount of money and efforts in promoting the said trade
mark. The respondent, a private limited company, is engaged in an established business of manufacturing and merchandising of medicinal and
pharmaceutical preparations and allied and cognate goods and has in or about June, 2002 conceived and honestly adopted the trade mark DROT and
obtained registration thereof under No. 1109280 as of 5.6.2002 in class-5. In November, 2004, when the applicant came to know of the infringement
of its registered trade mark, it filed a Civil Suit (OS) No. 1285 of 2004 for permanent injunction against the respondent wherein the respondent has
raised the defence under Clause (e) of Sub-section (2) of Section 30 of the Act and in view of the present rectification application, the application for
stay has been withdrawn by the applicant from the High Court of Delhi with liberty to file afresh after the present application is decided. In view of
the said defence raised by the respondent, the applicant has filed the present application under Section 125 of the Act. It is averred by the applicant
that the entry of the impugned mark has been made without sufficient cause; that the registration was obtained contrary to the provisions of Section
11(2)(a) of the Act and the same continues till now to violate the said provisions; that at the time of commencement of these proceedings, the
impugned mark was not distinctive of goods of the registered proprietor and the same is not protected under Section 32 of the Act and that the
impugned mark has wrongly been registered and is wrongly remaining on the register. It is further averred that the applicant is a person aggrieved
under Section 57 of the Act by the impugned registration and the registration is liable to be expunged under the said section.
3. The respondent in March, 2006 filed its counter-statement denying the material averments made in the application along with the affidavit Dated 6th
March, 2006 of Shri K.C. Paul, Vice-President (Planning and Coordination) of the respondent, annexing therewith the statement of sales from 2002 to
2005, photocopies of sales invoices from 2002 to 2005, specimen of packaging materials of DROT products, etc. The applicant filed its reply to
counter-statement in September, 2007 along with the affidavit dated 14.9.2007 of Mrs. Kalpana Umakanth, the constituted attorney of the applicant
annexing therewith copies of drug licence, statement of sales turnover of DROTIN range and sales promotional expenses and invoices from 1997-98
to 2004-05, copy of last renewal of trade mark, etc.
4. The application came up before us for hearing on 21.9.2007 when Shri Amarjeet Singh, Advocate appeared for the applicant and Shri B.N. Poojari,
Advocate appeared for the respondent.
5. Learned Counsel for the applicant completed his argument but due to paucity of time the learned Counsel for the respondent could not begin his
argument and hence the part heard matter was, with the consent of both sides, decided to be listed for hearing at Chennai. Learned Counsel for the
respondent consented in principle if the reply to counter-statement; affidavit and documents is taken on record by the Appellate Board provided that
the applicant files, after due process of law, petition seeking condonation of delay for late filing of reply, affidavit and documents. Accordingly, the
applicant has filed a miscellaneous petition for the condonation of delay. The miscellaneous petition and the part heard application came up for hearing
on 12th October, 2007 when the learned Counsel for both sides appeared and argued on the application and miscellaneous petition together.
6. Learned Counsel for the applicant submitted that the applicant is the registered proprietor of the trade mark as of 3.2.1997; on 2.4.1997 obtained
licence to manufacture the medicines under the trade mark DROTIN for the basic drug known as ISI-Dyhydro ethaverine chloride and thereafter
manufactured and made the vendible goods available in the market in May, 1997. The applicants have incurred considerable amount of expenses on
sales promotion of their product DROTIN during the past years. He further submitted that the respondent has obtained registration of DROT
subsequent to the use and registration of trade mark DROTIN of the applicant, and such a registration has wrongly been made and is wrongly
remaining on the register without sufficient cause. The registration of the impugned mark in the name of the respondent is an impediment in the
business of the applicant and has afforded defence under Clause (e) of Sub-section (2) of Section 30 of the Act to the respondent in the infringement
proceedings instituted by the applicant. The applicant is, therefore, a person aggrieved and has locus to file the present application. Reliance was
placed upon the decisions rendered in the cases of Khoday Distilleries Ltd. v. The Scotch Whisky Association, Scotland and Ors. AIR 1999 Mad. 274
and Ciba Ltd. Ramalingam,
7. Learned Counsel for the applicant contended that the registration of the respondent's trade mark has been made in contravention of the provisions
of Sections 9, 11 and 18 of the Act and the registration is under challenge herein as an entry made without sufficient cause and is wrongly remaining
on the register. He emphatically contended by pointing out that the averment of the respondent made in paragraph 3 of the counter-statement about
use of the mark by depicting on labels having distinctive design, lay out, get up and colour scheme have no relevancy to the facts in issue and since the
respondent has admitted in paragraph 2 of the counter-statement that the trade mark DROT is derived from the basic drug Drotaverine Hydrochloride
and is descriptive and indicative of composition, thus falling under statutory prohibition of registration. Relying upon the decisions in the Nathoo Lal v.
Durga Prasad and Narayan Bhagwantrao Gosavi Balajiwal v. Gopal Vinayak Gosavi and Ors. learned Counsel submitted that the admission made by
the respondent is the best evidence. He further submitted that the case relied upon by the respondent (in the counter-statement) as reported in 1996
PTC 561 is of no help to the respondent but supports the applicant's present application for rectification. There is no proof of use prior to filing of
application for registration except a bald and false claim made in paragraph 6 (iii) of the counter-statement to the effect that the mark under the
present registration is in continuous use all over India since 24.5.2002. Even if user is presumed for the sake of argument (though denied as false), it
comes to about 11 days' use of the mark at the time of filing application which period can in no way be sufficient to overcome the statutory bar to the
registrability of the mark under Section 9 of the Act. Learned Counsel stressed that the impugned registration of DROT was prohibited and continues
to be prohibited under Section 9 of the Act. The use of the impugned mark on the part of the respondent up to the date of application is of no
consequence on account of the admissions made by the respondent in paragraph 2 of the counter-statement and due to the fact that such statement is
in bad faith and in violation of the common law as well as statutory rights of the applicant in the trade mark DROTIN. Relying upon the decision of the
Division Bench of Calcutta High Court in Chandra Bhan Agarwal and Anr. v. Arjundas Agarwal and Ors., learned Counsel contended that the
impugned trade mark was devoid of any distinctive character and continues to be so at the time of filing the present application as the descriptive
words have never been recognised as appropriate for use as trade marks.
8. Learned Counsel submitted that the applicant is prior adopter and user of the mark and also obtained registration of the trade mark as of 3.2.1997
and the respondent is subsequent in adopting the impugned trade mark. The adoption of the mark, which is deceptively similar to the earlier registered
mark DROTIN, is dishonest, malafide and tainted and such adoption and registration has been made and obtained with a view to take advantage of
the goodwill and reputation of the applicant's trade mark. The entry of DROT in the register has been made in an illegal manner in violation of the
statutory prohibitions and the registration of the impugned mark is thus in contravention of Section 11(2)(a) of the Act. Due to the deceptive similarity
of the respondent's impugned mark with the mark of applicant, the articles or goods falling under the same class and the similarity of goods covered by
the trade marks; there exists a likelihood of confusion on the part of consumers and trade. In view of this the impugned registration to the respondent
has wrongly been granted. Reliance was placed upon the decisions in Amritdhara Pharmacy v. Satya Deo Gupta Astra-IDL Limited v. TTK Pharma
Ltd. (1992-PTC-137) and Sanat Products Ltd. v. Glade Drug & Nutraceuticals Pvt. Ltd. and Anr. 2003 (27) PTC 525 (Del).
9. Learned Counsel, in relation to petition for condonation of delay in filing reply, submitted that the applicant had engaged Lawmarks Naveen &
Saturn, New Delhi for filing and pursuing the instant rectification proceedings but the rectification application was drafted by a lawyer based at
Chennai. The respondent filed the counter-statement and a copy of that counter-statement was forwarded to the lawyer at Chennai for taking further
action. The lawyer did not take steps to draft the rejoinder but kept on assuring that he will do the needful and forward the rejoinder to Lawmarks
Naveen & Saturn. By taking us to the various copies of the correspondences exchanged between the Lawmarks Naveen & Saturn and the lawyer,
the learned Counsel submitted that the delay was neither with mala fide intention nor deliberate on the part of the applicant but due to the facts
disclosed in the petition and it would be unjust to punish the applicant for the fault of its erstwhile lawyer.
10. Learned Counsel for the respondent submitted that the applicant is not a person aggrieved and has no locus standi to file the present application.
He submitted that it is also denied that the applicant is prior adopter and proprietor of the mark DROTIN and the respondent's mark is nearly identical
to the mark of the applicant.
11. Learned Counsel submitted that the trade mark DROT adopted and used by the respondent in respect of its medicinal and pharmaceutical
preparations is derived from first four letters of the basic drug and, is descriptive and indicative of composition. He further submitted that the trade
mark to which the applicant claims right to proprietorship and exclusive use is wholly derived from the basic drug DROTAVERINE. By placing
reliance upon the decisions in Panacea Biotec Ltd. v. Recon Ltd. 1996 PTC (16) 561 and Khandelwal Laboratories Ltd. v. FDC Limited 2001 PTC
864 (Del), the learned Counsel submitted that it is the settled law that trade marks wholly derived from the basic drugs by deleting few letters is
descriptive and indicative of composition and as such no exclusive right to use or proprietorship thereon can be claimed as has been claimed by the
applicant. He submitted that the applicant having no right to exclusive use or proprietorship on its trade mark which is wholly derived from the basic
drug 'Drotaverine' by deleting few letters, descriptive and indicative of composition has no valid ground under the law or equity to seek removal of
respondent's trade mark from the register.
12. Learned Counsel made a submission that the trade mark DROT is in continuous use all over India since 24.5.2002 for which application for
registration was made on 5.6.2002 and the mark was registered. The mark DROT being inherently distinctive, had acquired factual distinctiveness in
relation to goods for which it is registered prior to 7.11.2005 when this application was filed. Therefore, the mark is protected under Section 32 of the
Act. He contended that the applicant's mark DROTIN, as earlier stated is, wholly derived from the basic drug Drotaverine by deleting a few letters
and thus descriptive and indicative of the composition and as such it has no exclusive right to use and file the rectification application.
13. Learned Counsel emphatically denying that the registration was obtained contrary to the provisions of Section 11(2)(a) or any other provisions of
the Act, submitted that since the applicant's trade mark is not adjudged as well-known mark, the applicant is not entitled to invoke Section 11(2)(a) of
the Act. By placing reliance upon the decision rendered in the case of Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals & Pharmaceuticals Ltd.
2007 (34) PTC 469 (DB) (Del.), the learned Counsel submitted that the rival marks are structurally, visually and phonetically different and distinct and
there is no likelihood of deception or causing confusion. He further submitted that there was no suppression of facts in obtaining the registration as
alleged by the applicant and the learned Registrar of Trade Marks had considered the matter and after having found that the respondent's mark was
of the distinctive characteristics, different and distinct to the applicant's mark was pleased to accept and ordered its advertisement in the Trade Marks
Journal. While concluding the learned Counsel submitted that this Appellate Board ought not to exercise its jurisdiction under Section 57 of the Act,
more particularly Sub-section (2) thereof for rectifying the register in whatsoever manner detrimental to the respondent's ownership and exclusive use
of trade mark under the law and equity but on the contrary the Appellate Board may, by invoking Sub-section (3), decide the propriety of the marks
having distinct and different structural, visual and phonetic characteristics and also both being derived from the same basic drug.
14. Learned Counsel, in relation to the miscellaneous petition, has raised objection that the explanation given for delay by the applicant does not appear
to be true as the copies of correspondences purported to be exchanged between the lawyer at Chennai and Lawmarks Naveen & Saturn, New Delhi
appear to be fabricated as they do not seem to be copies of e-mail. By producing an e-mail copy before us he contended that there is lot of
characteristic difference between the copy of e-mail he has produced and copies of e-mail annexed to the petition. The second objection of the
learned Counsel was that there are certain documents included in the evidence for which there is no mention in the rejoinder and that the affidavit is
not verified by the authorised person. On clarification having given by the learned Counsel for the applicant, the learned Counsel for the respondent
was satisfied and he did not press for the objections.
15. The learned Counsel for applicant while replying to the submissions made by the learned Counsel for the respondent vehemently denying that the
applicant's mark is derived from the basic drug submitted that the same has not been derived from the basic drug DROTAVERINE as alleged by the
respondent's counsel but is a coined word and its acquired distinctiveness stands proved in view of the averments made by Shri K.C. Paul in his
affidavit. In support of his submission that the applicant's mark is coined and neither a dictionary word nor a generic word he relied on the decision in
Win-Medicare Limited v. Somacare Laboratories 1997 PTC (17). He drew our attention to drug licence dated 2.4.97 obtained by the applicant to
manufacture the medicine under the trade mark DROTIN for the basic drug known as ISI-Dyhydro ethaverine chloride.
16. After having heard the counsel for both the sides, the first issue to be determined is whether the applicant is a person aggrieved having locus standi
to file this application. The prerequisite for filing an application under Section 47 or Section 57 of the Act is that the applicant must be a 'person
aggrieved'. The Supreme Court in the National Bell Co. (P) Ltd. and Anr. v. Metal Goods Mfg. Co. Ltd. and Anr. PTC (Suppl) (1) 586 (SC) at p.593
has observed that the expression ""aggrieved person"" has received liberal construction from the courts and includes a person who has, before
registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor
of such a trade mark. In relation to an application under Section 56 of the Trade and Merchandise Marks Act, 1958 (corresponding to Section 57 of
the Act), the Supreme Court in the case of Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. has observed that the locus standi would be
ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to
have such wrongful entry removed. In the case of Khoday Distilliries Ltd. (supra), the Scotch Whisky Association and Johny Walker and Sons
Limited made an application before the Assistant Registrar of Trade Marks for expunging the trade mark 'Peter Scot' in the name of Khoday
Distilleries on the ground that the trade mark offended Section 9 of the Act as it was neither distinctive nor was capable of distinguishing the
registered proprietor's goods; that the registration contravenes Section 11(a) of the Act as it contains the words 'Scot' which is likely to deceive or
cause confusion, etc. The Assistant Registrar allowed the application and on appeal to the High Court of Madras, the Court refusing to interfere with
the order of lower tribunal held that where application for rectification of register by expunging trade mark of whisky was filed Scotch Whisky
Association along with member who was prejudicially affected by registration of trade mark, the application was maintainable. The Court emphasised
that the words 'person aggrieved' occurring in Section 56(2) of the Trade and Merchandise Marks Act, 1958 however widely interpreted cannot
dislodge the need for a direct link between the person and the grievance. In the case of Ciba Ltd. (supra), the Court observed thus: The phrase ""any
person aggrieved"" has been liberally construed so as to hold the persons aggrieved all those who are in some way or other substantially interested in
having the trade mark removed where it is a question of removal from the register, or persons who would be substantially damaged if the trade mark
remained. In view of this definition it will be difficult to conceive of a person more aggrieved than the appellants because the appellants' case is that
the product of the respondents is likely to be sold as the product of the appellants...'.
17. By applying the above propositions of law, the applicant is a person aggrieved as the applicant and the respondent are in the same business of
manufacturing of and dealing in similar goods falling under the same class. The applicant is prima facie prior adopter and user of the mark and by
registration of the respondent's trade mark the applicant is prejudicially affected by such registration of trade mark. The registration of the impugned
mark in the name of the respondent is an impediment in the business of the applicant and has also afforded defence under Clause (e) of Sub-section
(2) of Section 30 of the Act to the respondent in the infringement proceedings instituted by the applicant. Therefore, the applicant is a person
aggrieved and has locus to file this application.
18. The next issue is whether the entry made in the register is, without sufficient cause; wrongly remaining on the register and contrary to the
provisions of Sections 9, 11 and 18 of the Act. Section 9 of the Act provide for absolute grounds for refusal of registration of trade marks. For our
present purpose, such grounds for refusal are if the trade marks which are devoid of any distinctive character or which consist exclusively marks or
indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of
the goods or rendering of the service or other characteristics of the goods or service, subject to exception that a trade mark which has acquired
distinctive character by use before the date of application or a well-known trade mark shall not be refused, or if a mark is of such nature as to deceive
the public or cause confusion. Section 11 of the Act, save as provided in Section 12, provided for relative grounds for refusal of registration. One of
the relative ground, for our present purpose, is that a trade mark which is identical with or similar to an earlier trade mark shall not be registered, if or
to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage
of or be detrimental to the distinctive character or repute of the earlier trade mark.
19. Now we would consider whether the impugned trade mark falls under any of the absolute grounds for refusal of registration or qualified to be
registered under Section 9 of the Act. The mark DROT is exclusively derived from the basic drug (in fact a generic word) without containing
something else, a surplus or a sufficient capricious, which is not inherently distinctive or capable of distinguishing. Descriptive words are not qualified
to be registered unless they have acquired distinctiveness by use and trade evidence or acquired a secondary meaning before registration. The
Division Bench of Calcutta High Court in Chandra Bhan's case (supra), while allowing the appeal and setting aside the judgment and order of the
Single Judge dismissing the application for rectification has held as under:
17. Apart from the conditions referred to in Section 9, the Courts have uniformly and consistently imposed further condition before a trade mark is
granted registration. No trade shall be allowed to be registered which may hamper or embarrass the traders or the trade now or in future in which this
proposed to be registered. Lord Parker in the case of Registrar of Trade Marks v. W. & C. Due Cross Ltd. (1913) 30 RPC 660 lays down that the
Registrar is not bound to all registration even if the mark were in fact distinctive. He observed:
The applicant for registration in effect says 'I intend to use this mark as a trade mark i.e. for the purpose of distinguishing my goods from the goods of
other persons and the Registrar or the court has to determine before the mark be admitted to registration whether it is of such a kind that the applicant,
quite apart from the effects of registration' is likely or unlikely to attain the object in view. The applicant's chance of success in this respect
must...largely depend upon whether the traders are likely in the ordinary course of their business and without any improper motive, to desire to use the
same trade mark or some mark nearly resembling it, upon or in connection with their own goods.
It is apparent from the history of trade marks in this country that both the legislature and the courts have always shown a natural disinclination to allow
any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use. For example, names
(unless represented in a special manner) and descriptive words have never been recognised as appropriate for use as trade marks.
In Win-Medicare Limited's suit for passing off, where the facts and issues involved were similar to the case on hand, the High Court of Delhi
considered whether the mark DICLOMOL is descriptive. The learned Counsel for defendant therein had contended that in the mark DICLOMOL,
prefix DICLO has been taken from DICLOFENAC SODIUM and suffix MOL has been taken from PARACETAMOL which are basic drugs and
as such the mark is a descriptive mark and the plaintiff has no exclusive right for use. The Court held thus: ""The mark may have been so formed but it
cannot be said that an ordinary person or even a medical man will be in a position to say that this mark is so composed unless he is so told. The mark
in itself does not convey the idea that it is descriptive of the said basic drug nor has any dictionary meaning. Applying the test laid down in Drorovit's
case (supra) as noticed above, in my view the mark DICLOMOL is not descriptive word nor generic word but an invented word.
It is an admitted fact that the impugned mark is descriptive of the product or goods for which it is registered. The impugned trade mark DROT is
derived from the basic drug. In paragraph 2 of the counter-statement, the respondent has admitted in that the trade mark DROT is derived from the
basic drug by stating thus: ""It is submitted that the trade mark DROT adopted and used by us and registered in our name in respect of the medicinal
and pharmaceutical preparations is derived from first four letters of the basic drug Drotaverine Hydrochloride and, is descriptive and indicative of
composition."" In view the statement of admission we are hardly required to decide the issue of distinctiveness of the mark of the respondent. The
statement of Shri K.C. Paul in para 4 of his affidavit that the word DROT has no direct or indirect reference to the character or quality of goods and
is not descriptive of the goods is not admissible as the same is out side the contents of the counter-statement. The admission of the respondent is in our
view true as nothing contrary to that has been shown or withdrawn by the respondent. Our above view gets support from the decision in Nathoo Lal's
case (supra), wherein the Supreme Court has held that what is admitted by a party to be true must be presumed to be true unless the contrary is
shown. Further, the same Court in Narayan Bhagwantrao Gosavi Balajiwal's case (supra) has held that an admission is the best evidence that an
opposing party can rely upon, and though not conclusive, is decisive of the matter, unless successfully withdrawn or proved erroneous. The user
claimed by the respondent shown in the Trade Marks Journal Mega 2, dated 25.9.2003 at page 1038 is since 24.5.2002 whereas application was made
on 5.6.2002 and registration of the impugned trade mark is as of 5.6.2002. Similarly, at page 3 of the affidavit it is stated that the statement of sales
figures in respect of DROT products during the period from 2002 to 2005 as Exhibit 'A' and copies of sales invoices evidencing sale of DROT
products all over the country for the period from 2002 to 2005 as Exhibit 'B' are annexed but the first and second sale invoices are both dated
30.9.2002, two invoices for October, 2002, there is no invoice for the month of November, 2002, from 30.12 2003 to 31.12.2004, January to April and
May, to October, 2005. There is no whisper about the non-inclusion of invoices pertaining the above mentioned periods. Whatever skeleton invoices
available on record show that the same are not exclusively for goods bearing the name DROT but include other goods also for sale and hence the
statement of sales figures can not be treated to be exclusively for DROT products as has been claimed in the affidavit. There is nothing in the
pleadings about the expenses incurred, if any, by the respondent towards popularising or propagating its trade mark by way of publicity or
advertisements. The evidence of use is, to our view, not sufficient to prove that the impugned mark had acquired distinctiveness prior to application or
even after registration up to the date of commencement of the present rectification proceedings. There is no mention in the affidavit as to the
acquisition of distinctiveness during the period from registration up to the date of filing of the present application, except a bald statement at para 7 (iv)
to the effect that in view of continuous and extensive use of the mark since 24.5.2002, on or before the date of present application challenging the
validity of registration, the mark has acquired factual distinctiveness. There is no material in the affidavit to show that the impugned mark has acquired
distinctiveness after registration up to the date of filing of rectification application. In view of these, it is undisputedly admitted that the mark is
descriptive of the product not qualifying to be registered under Section 9 and the protection under Section 32 of the Act as claimed by the respondent
cannot be given. However, we do not agree with the averment of the applicant that the provisions of Section 32 of the Act have no applicability to the
facts and circumstances of the case. We are of the view that by virtue of provisions of Section 159(3) of the Act, for the simple reason that the mark
DROT has been registered and the application made under the Act, the provisions of Section 32 is applicable, though as we have said earlier that the
protection of registration is not available due to non-acquisition of distinctiveness of the mark. On the other hand, though the applicant is not required to
prove the validity of registration of DROTIN, yet the learned Counsel for applicant has while vehemently denying that the mark is derived from the
basic drug submitted that the applicant's mark is a coined mark. The basic drug shown in the drug licence is ISI-Dyhydro ethaverine chloride. It
cannot be said that an ordinary person or even a medical man will construe that this mark is derived from the basic drug. The mark is neither a
dictionary word nor a generic word. We do not see any reason to reject such a submission. We are of the view that the impugned registration of mark
DROT is in violation of Section 9 of the Act.
20. The next connected issue is as to whether the impugned mark is identical with or similar to the earlier trade mark and there exists a likelihood of
confusion on the part of public. There are a number of cases decided by different Courts laying down principles to be followed in deciding these
issues. We would now refer to some of the decisions rendered by different Courts. A Division Bench of the Bombay High Court in Hiralal Prabhudas
v. Ganesh Trading Co. adverted to the previous decision of the Supreme Court on the subject and held that the Court must be guided by the following
considerations:
5. What emerges from these authorities is (a) what is the main idea or the salient features, (b) marks are remembered by the general impressions or
by some significant detail rather than a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at
from the view of the first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and
similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g)
marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which
the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably the nature of
the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.
In the case before the Supreme Court an application for registration of the trade mark 'Lakshmandhara' in respect of medicinal preparations for
alleviation of various ailments was opposed by the proprietors of the trade name 'Amritdhara' which was already registered as trade name in respect
of similar medicinal preparation of the ointments. On the question whether the trade mark 'Lakshmandhara' was likely to deceive the public or cause
confusion to trade, it was held that the question had to be approached from the point of view of a man of average intelligence and imperfect
recollection. To such a man overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' was likely to deceive or
cause confusion. It was further held that the overall similarity of the composite words 'Amritdhara' and 'Lakshmandhara' had to be considered having
regard to the circumstance that that the goods bearing the two names are medicinal preparation of the same description. After considering various
authorities cited before the Supreme Court, the Court has held as under (supra):
(9) We agree that the use of the word, 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to
consider here is the overall similarity of the composite words having regard to the circumstance that that the goods bearing the two names are
medicinal preparation of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, ""fools
or idiots"", may be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average
intelligence and imperfect recollection would be deceived by the overall similarity of the two names and having regard to nature of the medicine he is
looking for with a some what vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark
is the whole thing - the whole word has to be considered. In the case of the application to register 'Erectiks' (opposed by the proprietors of the trade
mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.'s Application, (1935) 52 RPC 136:
I do not it is right to take a part of the word and compare it with a part of the other word, one word must be considered as a whole and compared with
the other word as a whole. I think it is dangerous method to adopt to device the word up and seek to distinguish a portion of it from a portion of the
other word.
21. In the case of M/s. Astra-IDL Limited (supra) held that in deciding whether the word Betalong is deceptively similar to the word Betaloc, each of
the two words must be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both
from visual and phonetic point of view. It is not a matter for microscopic inspection but to be taken from the general and even casual point of view of
a customer. As the mark Betalong is too near and so similar to the mark Betaloc, the likelihood of confusion being caused cannot be ruled out.
Applying the threefold tests of phonetic, visual and structural similarity and the plaintiff's having made out a very strong prima facie case for grant of
interlocutory relief as prayed for in the Notice of Motion, the Notice of Motion is made absolute as prayed for. In the Sanat Products Ltd.'s case
(supra) where the similarity of the two trade marks 'REFORM' and 'REFIRM' was considered by the High Court of Delhi in a passing off action, the
Court held that both the trade marks are visually constructively and phonetically resemble each other and there can be possibility of a mistake of
identifying one for the other on the part of the doctors and nurses who are not immune from mistake and cannot be said infallible and the chemists and
dispenser who may make bona fide mistake in reading the prescription of the doctor and supply the medicine of the defendant for the medicine of the
plaintiff asked for and vise versa. In Win-Medicare Limited's suit for passing off (supra), the High Court of Delhi considered, amongst others, whether
the defendant's mark DICMOL is identical and deceptively similarity to plaintiff's mark DICLOMOL and the Court held thus: ""There is not much
emphasis on this syllable in pronunciation. They have thus overall structural and phonetic similarity and therefore, likely to cause confusion and
deception to a man of average intelligence and of imperfect recollection, the medical product being used for alleviation of various ailments, will be
purchased mostly by people in villages and towns, literate as well as illiterate.
22. By applying the principles of comparison of two marks, DROTIN and DROT with four letters common and overall they closely resemble, visually
and structurally, except that both are pronounced differently. The goods for which registration have been obtained are similar and falling under the
same class. The purchasers are common, that is to say persons belonging to all classes of the society, and the trade channels also are same in both the
cases. Though the respondent's medicinal preparations are Scheduled drugs to be sold only on doctors prescription but the Courts have made
observations that availability of such drugs over the counter can not be ruled out. The physicians and pharmacists are not infallible and in medicines,
there can be no provisions for mistake since even a possibility of mistake may prove to be fatal. Since the marks involved are for medicinal
preparations which are to be used by human beings in respect of their health, even the slightest confusion may become hazardous to one's life and as
such, the danger is much more to human life. The rival marks nearly resemble and there exists likelihood of causing confusion and deception in the
mind of purchasing public. The decision in the Astrazeneca UK Ltd.'s case (supra) relied upon by the counsel for the respondent is distinguishable and
will be of no help to him. The decision in that case rather favours the applicant. In that case the Division Bench of High Court of Delhi had occasion
to consider the alleged deceptive similarity of trade mark Meromer to Meronem. The Court came to the conclusion that in both the names similar
prefix Mero has been used which was part of the molecule Meropenem used in both the medicinal preparation and similar prefix is used by a number
of preparations in the market, therefore neither party can raise any claim for exclusive user of the said word Meropenem. The Court held that when
taken as a whole the two trade marks cannot be said to be either phonetically or visually or in any manner deceptively similar to each other. The
decisions rendered in the cases of M/s. Panacea Biotec Ltd. and Khandelwal Laboratories Ltd. (supra) are also distinguishable and are of no help to
the respondent as the applicant herein has shown that its trade mark is not derived from the basic drug Drotaverine. But merely the impugned mark is
identical with or similar to the earlier trade mark is not sufficient to debar registration of the impugned mark unless the earlier registered mark is a
well-known mark in India and the use of the impugned mark without due cause would take unfair advantage of or be detrimental to the distinctive
character or repute of the earlier trade mark. There is neither pleading that the applicant's registered mark is a well-known trade mark in India nor the
facts, required to be taken into account as per Sub-sections (6) and (7) of Section 11 of the Act, available on the record to determine that the
applicant's trade mark is a well-known mark in India. Even whatever copies of sale invoices the applicant has filed do not show that it has agencies all
over India for sale of DROTIN range of goods as all the invoices pertain to Delhi, Haryana and Punjab areas. Therefore, the allegation that the
impugned registration is in violation of provisions of Section 11(2)(a) of the Act fails.
23. Though the averment about violation of provisions of Section 18 of the Act has been made in the application, but the learned Counsel for the
applicant has not advanced his arguments in this regard.
24. Now, we would consider the miscellaneous petition for condonation of delay in filing the reply to counter-statement. Before we discuss the
averments of applicant and submissions of learned Counsel for the parties, it may be worthwhile to quote the following principle laid by the Apex
Court in the case of Ramnath Sao @ Ramnath Sahu and Ors. v. Goverdhan Sao and Ors.
11. Thus it becomes plain that the expression ""sufficient cause"" within the meaning of Section 5 of the Act or Order 22 Rule 9 of the Code or any
other similar provision should receive a liberal construction so as to advance substantial justice when no negligence or inaction or want of bona fide is
imputable to a party. In a particular case whether explanation furnished would constitute ""sufficient cause"" or not will be dependent upon facts of each
case. There can not be straightjacket formula for accepting or rejecting explanation furnished for the delay caused in taking steps. But one thing is
clear that the courts should not proceed with the tendency of finding fault with the cause shown and reject the petition by a slipshod order in over
jubilation of disposal drive. Acceptance of explanation, furnished should be the rule and refusal an exception more so when no negligence or inaction
or want of bona fide can be imputed to the defaulting party. On the other hand, while considering the matter the court should not lose sight of the fact
that by not taking steps within the time prescribed a valuable right has accrued to the other party which should not be lightly defeated by condoning
delay in a routine like manner. However, by taking a pedantic and hypertechnical view of the matter the explanation furnished should not be rejected
when stakes are high and/or arguable point and facts and law are involved in the case, causing enormous loss and irreparable injury to the party
against whom the lis terminates either by default or inaction and defeating valuable right of such a party to have the decision on merit. While
considering the matter, courts have to strike a balance between resultant effect of the order it is going to pass upon the parties either way.
The applicant has stated to have engaged Lawmarks Naveen & Saturn, New Delhi for filing and pursuing the instant rectification proceedings and got
the rectification application drafted from a lawyer based at Chennai. The lawyer at Chennai did not take steps to draft the rejoinder to the counter-
statement for long time and thus the rejoinder could not be filed in time. We have heard both learned Counsel and gone through the correspondences
exchanged between the Lawmarks Naveen & Saturn, New Delhi and the lawyer at Chennai. No negligence or inaction or want of bona fide is found
to be imputable to the applicant. We are, therefore, satisfied that the cause shown by the applicant constitute sufficient cause for not filing the
rejoinder within time. We condone the delay and allow the rejoinder and the document to take on record.
25. In view of the above, the application is allowed and the Registrar is directed to expunge the trade mark No. 1109280 from the Register of Trade
Marks. The Miscellaneous petition No. 112/2007 is ordered in the above terms. Let a copy of this order be sent to the Registrar of Trade Marks.
There shall be no order as to costs.
