E. MERCK AKTIENGESELLSCHAFT Vs. SCHERING LIMITED

JUDGEMENT

(1.) This is a Petition filed by E. Merck Aktiengesellschaft, a Company incorporated under the laws of the Federal Republic of West Germany and having its principal place of business at Darmstadt, West Germany, by its constituent Attorney. Shiavax Ratanshaw Vakil (hereinafter referred to as the 'Petitioner') challenging by way of an appeal the Order dated 27th April, 1968 passed by the Joint Registrar of Trade Marks (hereinafter referred to as the 'Tribunal') whereby it permitted the registration of the trade mark "NEO MERCAZOLE" by the Proprietor thereof viz. the British Schering Limited, the Respondent herein. on the ground that the Respondent had made out a case under section 112 sub-sec. (3) of the Trade and Merchandise Marks Act, 1958, of honest concurrent user and that in its discretion registration of the said mark should be allowed with a limitation that the specification of goods in the application of the Respondent should read as "Pharmaceutical preparation containing carbimazole in tablet form". The Petitioner has challenged this decision mainly on two grounds viz, that the Tribunal was in error in holding that the Respondent had proved honest concurrent user and also on a ground which was permitted to he pleaded by way of an amendment to the Petition viz., that the Respondent was not the Proprietor of the said mark.

(2.) The short facts giving rise to this Petition are, that the Petitioner and its predecessor-in-business, are old established, well-reputed manufacturers and marketeers of medicinal and pharmaceutical preparations and chemical preparations used in medicine and is the Proprietor in India of many Trade Marks including the Trade Mark "MERCKOZONE" in Class 5. The Petitioner on coming to know of the advertisement of the Respondent's mark "NEO MERCAZOLE" for medicinal and pharmaceutical preparations in Class 5 in the Trade Mark Journal, opposed the same by a Notice of Opposition, dated 12th May, 1966. It is unnecessary at this stage to deal with the contention or set out in detail the facts which may establish that the Mark "MERCKOZONE" and "NEO MERCAZOLE" are identical, or deceptively similar as the Tribunal has held in favour of the Petitioner that both the marks are deceptively similar to each other . The Tribunal, however, on the facts of the case held that the Respondent had proved honest and concurrent user under Sec. 12(3) of the Act and allowed registration of the trade mark "NEO MERCAZOLE" of the Respondent. I will, therefore, only set out such facts as are necessary to decide upon the contention under section 12(3) of the said Act.

(3.) The Respondent had in India in the year 1953 put in the market it preparation in tablet form known as "MERCAZOLE" a remedy for thyroid disorders. The Respondent had filed an application in respect of the product on 6th Sept., 1951 under No. 150606 in Class 5 for medicinal and pharmaceutical preparations. On 18th Aug., 1952 for some reason the Respondent withdrew the application and hence the mark "MERCAZOLE for registration thereunder was not proceeded with. In the meanwhile, on 1st April, 1963 the Petitioner read an advertisement in a medical journal known as "Antiseptic" that the Respondent was using the trade mark 'MERCAZOLE'. Thereupon the Petitioner addressed a Notice dated 13th May, 1955 through their Trade Mark Attorney to M/s. Indian Schering Limited, wherein it was stated that the Petitioner had for the past many years sold in India it preparation under the trade mark "MERCKOZONE" and that the said mark was the property of the Petitioner. By the said letter M/s. Indian Schering Ltd., was called upon to desist forthwith from the use of the trade mark "MERCAZOLE" or any colourable imitation of the trade mark "MERCKOZONE" and to give an undertaking not thereafter to sell or cause to be sold any preparation under the trade mark "MERCAZOLE". It may be stated that although the letter was addressed to M/s. Indian Schering Ltd., the same was forwarded to the Respondent in the United Kingdom on the ground that M/s. Indian Schering Ltd. were merely the agents of their principals, British Schering Ltd., i.e. the Respondent. The Attorneys for the Respondent acting for M/s. Indian Schering Ltd., by their reply dated 4th Aug., 1953 informed the Petitioner that they had instructions on behalf of the Respondent to state that the sale of the produce "MERCAZOLE" in India had proved negligible and that, the product had been withdrawn from the market. Prior to this letter, a letter dated 26th May, 1963 was also written wherein it was mentioned that M/s. Indian Schering Ltd., had written to their Principal in India for instructions and that they were referred to the British Schcring Ltd., and that the Petitioner will he informed as soon as instructions were received. It was specifically denied in that letter that they infringed the Petitioner's rights. Nothing further transpired until the year 1964 when an application was made by the Respondent on 11th Sept., 1964 for registration of the mark "NEO MERCAZOLE" under application No. 224230. To this mark, after advertisement appeared in the Trade Mark Journal the Petitioner took an objection on the ground that "NEO MERCAZOLE" closely resembled the Petitioner's Trade Mark "MERCKOZONE" and the same was visually and phonetically too close to their said mark and that in the circumstances the registration of the Respondent's mark would be contrary to sections 11 and 12(1) of the Trade and Merchandise Marks Act. It was opposed on the ground that the adoption of the mark and its use by the Respondent was not honest and the Respondent was not entitled to the benefit of section 12(3) of the said Act. It was specifically mentioned in the notice of opposition that the Respondent had filed an earlier application for registration of the mark "MERCAZOLE" but on an objection taken by the Petitioner, the said application was withdrawn. Lastly, it was contended that the Tribunal ought not to have exercised the discretion in favour of the Respondent.