INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex, Annexe-I, 2nd Floor, 443, Anna Salai,

Teynampet, Chennai 600 018

 

 

(CIRCUIT BENCH HEARING AT MUMBAI)

 

ORA/36/2005/TM/MUM

                                          

MONDAY THIS, THE 7TH  DAY OF OCTOBER, 2013

 

HONBLE SHRI JUSTICE K.N. BASHA             --  CHAIRMAN

HONBLE MS. S. USHA                                          --  VICE-CHAIRMAN

 

M/s. PANACEA BIOTEC LTD.                               --       Applicants

B-1, EXTENSION, A-27, M.C.I.E.

MATHURA ROAD

NEW DELHI 110 044

 

(By Ms. Monika Razdan, Deputy Manager (IPR))

 

Vs.

M/s. NEON LABORATORIES PVT. LTD.

140, DAMJI SHAMJI INDUSTRIAL COMPLEX                --          Respondents

MAHAKALI CAVES ROAD

ANDHERI (E), MUMBAI 400 093

 

(By Advocate Mr. Sunil N. Nair)

 

ORDER (No. 223 of 2013)

 

HONBLE SHRI JUSTICE K.N. BASHA, CHAIRMAN:

 

            The applicant has come forward with the application seeking the relief of rectification by removing / expunging the Trade Mark No. 601815 in class 5.

 

2.         The case of the applicant is that they have registered under the Companies Act, 1956 having their Head Office at New Delhi. They have adopted the trade mark CILLAMIN in the year 1989 and they were using the said mark from 1994 onwards. Their mark was so familiar among the customers by their continuous use.

 

3.         The respondent preferred an application on 16/07/1993 for registration of the mark CILLAMIN stating that they have proposed to use the said trade mark. It is also stated by the applicant that till date the respondents have not chosen to use the said trade mark even after its registration. Therefore, it is stated that the said trade mark is wrongly registered by the Registrar and the same is liable to be removed. The respondents filed counter statement stating that they are the leading manufacturers in medical and pharmaceutical preparation. They have filed an application on 16/07/1993 for registration of trade mark CILLAMIN in class 5 in respect of pharmaceutical preparations. The respondents further stated that they have adopted this trade mark without any reference and knowledge of any other trade mark of the same name. It is also stated the said word CILLAMIN was coined from the generic name Penicillamine. The respondent stated that the application for rectification was not made by the aggrieved person. The respondent denied the other allegations made by the applicant.

 

4.         The applicant is represented by Ms. Monika Razdan, Deputy Manager (IPR) as authorized by the applicant company as per the resolution dated 26/09/2013.  The party in person would submit that the applicant has produced sufficient evidence to establish their claim that they are the prior user of the trade mark CILLAMIN. It is contended that the said evidence is put in the form of Drug Licence, Manufacturing License, WHO Certificate copies, Sales Invoices, promotion materials etc. It is contended that the original Drug licence was obtained in the name of M/s. PANACEA DRUGS PRIVATE LIMITED and subsequently the name was changed to the present name M/s. PANACEA BIOTEC LIMITED.  The party in person also relied on the invoices for the year 1993 and 1994 in order to show that they are prior use of the trade mark CILLAMIN.  The party in person would also contend that till date the respondents were not using the trade mark CILAMIN and as such the Registrar has wrongly registered the trade mark on the basis of the application preferred by the respondent and the same is liable to be removed.

 

5.         On contra, the learned counsel for the respondent Mr. Sunil N. Nair would contend that the applicant is giving contrary statement of their prior use. It is pointed out that in Form No TM-1, the applicant has stated that they have adopted the trade mark in 1989 and started use of the mark in 1994.  But in the affidavit produced, in para 5 it is stated by them that they have adopted the mark in 1989 and use of the mark was from 1980. It is further contended that as the applicant has not come with a definite case on prior user, it cannot claim prior use of the trade mark.

 

6.         It is further submitted that though the respondent has not used the registered trade mark till date, they cannot be deprived from using the mark in future as they got it registered. The learned counsel asked for some more time to give evidence to substantiate his claims.

 

7.         We have carefully considered the contentions put forwarded by both the parties including the application of the applicant and counter statement made by the respondent.

 

8.         At the outset, it is to be stated that though the applicant has produced evidence, only today, the learned counsel for the respondent sought time to produce evidence. But the fact remains that it is specifically stated by the respondent in their communication dated 06/12/2005 addressed to the Deputy Registrar of IPAB stating that We hereby submit that we do not desire to adduce any evidence in support of our Counter Statement at this stage but would intend to rely on facts stated in our Counter Statement in Form No. 1 dated 31st August, 2005.

 

9.         In view of the specific statement made by the respondent, there is no justification for taking further time.  It is pertinent to note that the applicants in their pleadings contended that they have adopted their trade mark CILLAMIN right from the year 1989.  Though it is stated by the applicants that they were using the trade mark right from the year 1990 in one place and in another place it is given as 1994, the applicants have produced documents to substantiate that they were using the trade mark from the year 1993, which is very much evident from the production of invoices. On the other hand, the undisputed fact remains that the respondents have specifically mentioned in the application preferred by them on 16/07/1993 that they propose to use the trade mark CILLAMIN and till date, the respondents are not using the said trade mark even as per the submission made by the learned counsel for the respondents. Such being the position, the trade mark registered is liable to be removed on the ground of non-use as per the provision under Section 47 of the Trade Marks Act, 1999.  It is relevant to give the provision as under:-

 

47. Removal from the register and imposition of limitation on ground of non-use:-

 

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either

 

(a)       that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it  should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

 

(b)       that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:

 

On going through the above provision, it is crystal clear that the said provision is applicable to this case as the respondent is not using the trade mark as on date and such trade mark should be removed from the Register.

 

10.       It is made clear that though there is a discrepancy or contradiction made by the applicant regarding the actual user of the trade mark, we are confined to decide the matter on the question of non-user. Accordingly, the application is ordered and the Registrar is directed to remove the Trade Mark No. 601815 in class 5.

 

 

 

(S. USHA)                                                                 (JUSTICE K. N. BASHA)

VICE-CHAIRMAN                                                    CHAIRMAN

 

 

Reportable:        Yes   /   No

 

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)