CIBA GEIGY LIMITED Vs. TORRENT LABORATORIES PRIVATE LIMITED

JUDGEMENT

(1.) This is an Appeal under Sec. 109(2) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') preferred against the decision of the Assistant Registrar of Trade Marks, dated 15th May, 1991 accepting the application of the respondent No. 1 for registration of the trade mark ULCIBAN subject to the amendment under Sec. 18(4) in the specification of goods so as to read Medicinal and Pharmaceutical preparations containing CIMETIDINE for the treatment of ulcer and to be sold on the written prescription only .

(2.) The respondents No. 1 made an application No. 422819 dated 5th June, 1984 in Class 5 for registration of the trade mark ULCIBAN under Sec. 18(1) of the Act which was advertised in Trade Mark Journal No. 925 dated 16th December, 1989 at Page 678 in accordance with the provisions of Sec. 20 of the Act. The petitioner gave notice of opposition to the registration under Sec. 21(1) of {he Act and respondent No. 1-Applicant sent its counter-claim in support of his application. Evidence as required by Sec. 21(4) was submitted in the prescribed manner by the parties. The petitioner's contention was that it is carrying on business as manufacturers and merchants of medicines and pharmaceuticals and is a Company incorporated in Switzerland. According to the petitioner, it is the Registered Proprietor of Trade Mark 'CIBA' and several other trade marks incorporating the trade mark 'CIBA' which is a part of the series of such trade marks. The trade mark 'CIBA' was registered under No. 1654 dated 2nd July, 1942 in Class 5 in respect of medicinal preparations, pharmaceutical and veterinary preparations, sanitary chemical substances, disinfectants, preparations for killing weeds and destroying vermin. According to the petitioner, 'CIBA' forms the fore-part and most distinctive and prominent feature of the plaintiff's corporate name and trading style. Ciba of India Limited, which was the predecessor-in-title of Hindustan Ciba-Geigy were the recorded registered users of the trade mark 'CIBA' upto 17th February, 1970. The Cilia of India Limited, after the change of its name into Hindustan Ciba-Geigy Limited had extensively used the trade mark 'CIBA'. According to the petitioner, they were the Registered Proprietor of Trade Marks 'CIBA', 'CIBAZOL' and 'CIBALGIN and other trade marks containing the word 'CIBA'. The goods under the trade marks 'CIBAZOL' and CIBALGIN were continuously and extensively sold throughout India by Hindustan Ciba-Geigy Limited as registered users/licensees. The petitioner, there fore, opposed the use of trade mark 'ULCIBAN' on the ground that it was likely to be taken as having some connection with the petitioner because it contains the word 'CIBA' which is the most significant part of the petitioner's name and because 'CIBA' is one in a series of trade marks owned by the petitioner which contain the word 'CIBA'. According 10 the- petitioner, their trade mark 'CIBA' is distinctive; of and is extensively identified with its goods and use of the word 'CIBA' in the impugned mark 'ULCIBAN' was bound to cause confusion and deception amongst the trade and public who would assume that it was yet another mark of the petitioner. According to the petitioner, the goods in the rival mark were identical and the trade channels of the parties were also same. Since the respondent No. 1 was well aware of the petitioner's mark at the time of adoption of the impugned mark, adoption was dishonest and with an intention to trade upon the benefit from the reputation and valuable goodwill in the petitioner's mark. The petitioner, therefore, took objections under Sees. 9, 11(a), 11(e), 12(1) and 18(1) of the Act against the registration of the impugned mark.

(3.) The case of the respondent No. 1 was that it had adopted the impugned mark ULCIBAN in the year 1984 and was using the same since then after obtaining the permission from the Drugs Control Administration in the State of Gujarat, In the counter-statement filed by the respondent No. 1, they denied that the registration of the impugned mark was contrary to the provisions of Secs. 9, 11(a), 11(e), 12(1) or 18(1) of the Act. Though in the counter-statement, stock denials were put up to all that was stated in the opposition by the petitioner, it appears that the main controversy at the time of arguments centered around the question as to whether the impugned mark was likely to cause deception and confusion amongst the trade and public by virtue of the use of the word 'CIBA' as a prominent feature and because the petitioner was the Proprietor of a serious of marks consisting that word. The Assistant Registrar of Trade Marks was of the opinion that the impugned mark 'ULCIBAN' comprised of two prominent features 'ULCI' and 'BAN' and though the word 'CIBA' was included in the impugned mark by virtue of the presence of letters 'CIBA', the word 'CIBA' could not, by itself, be pronouced independently and therefore it did not occupy any prominent position in the impugned mark ULCIBAN. He was of the view that the registration of the impugned mark of the respondent No. 1 was not likely to cause any confusion or deception. He also found that there was nothing to support the plea of the petitioner about the dishonest adoption of the impugned mark by the respondent No. 1. The Assistant Registrar accepted the suggestion of the learned Counsel for the respondent No. 1 for amending the Specification of Goods so as to read Medicinal and Pharmaceuticals preparation containing 'CIMETIDINE' for the treatment of ulcer and to be sold on the written prescription only instead of Pharmaceutical and Medicinal preparations , which appear in the advertisement in the Trade Mark Journal. The opposition of the petitioner was, therefore, refused and the Assistant Registrar directed the application to proceed to registration after the said amendment in the Specification of Goods.