Manmohan Singh, Chairman
The appellant company has filled the present petition for removal of the Trademark no. 1062931 in class 5 registered in the name of M. Sardarmal Chordia, M. Ranjitmal Chordia & Sons (HUF) and M. Sampathaml Chordia & Sons (HUF) trading as Medopharm at 40, Giriappa , T. Nagar, Chennai- 600017, Tamilnadu.
2. The applicant, M/s Arbro pharmaceuticals Limited, is a company incorporated under the Indian Companies Act, 1956 having its registered office at 6/14, Kirti Nagar Industrial Area, New Delhi-110015. The applicant company has been in the business of manufacturing and marketing pharmaceutical and medicinal preparations for the last many years.
3. It is alleged by the applicant.that the applicant in the year 1995 conceived and adopted a trademark NORKIN in respect of one of its pharmaceuticals preparations and the said trademarks is an invented/coined one. Immediately after obtaining the drug manufacturing license, issued under the provisions of the Drugs and Cosmetics Act, 1940 by the office of the Drugs Controller, Delhi Administration, for manufacturing the product under the trademark NORKIN, the applicant company in 1995 itself started manufacturing pharmaceutical products under the trademark NORKIN. The said manufacturing license has been renewed from time to time and is valid and subsisting till date.
4. Case of the applicant:-
The said trade mark of the applicant and the pharmaceutical preparations manufactured thereunder have been in use extensively and continuously and have acquired reputation of being extremely safe and reliable drug by virtue of adherence to strict quality standards maintained by the applicant. Consequently the pharmaceutical preparations bearing the trade mark NORKIN have come to signify the products originating from the applicant company exclusively.
I. The pharmaceutical Product of the applicant bearing the trademark NORKIN has been in use extensively and continuously by the applicant both the India and abroad on a fairly large scale. The medicinal products of the applicant have been approved as regular supplier of medicines to Government institutions like Railways, Central Government Health Scheme. The applicant has supply of its medicinal products to the major hospitals like RML Hospital, LRS Hospital, Kalawati Saran Hospital, G.B. Pant Hospital, SVBP Hospital, Meerut, Safedarjung Hospital, Municipal Corporation of Delhi, Assam Rifles, J&K Hospitals, etc., The applicant also export its pharmaceutical products to the various like Afghanistan, Iraq, CIS Countries, African Countries Uzbekistan, Tajikistan, Ghana, Nigeria, Afghanistan, Myanmar, Russia, Vietnam.
II. In order to acquire statutory rights in respect of its trademark NOPKIN the applicant filed an application for the registration of the trade mark NORKIN in Class-5 in respect of "medicinal and pharmaceutical preparation" . The said application for the registration of the trade mark NORKIN was filed on the 16/11/1995 and was allotted with an application no. 687079 claiming user since 13/11/1995 and the said application of the applicant company will soon get registered.
III. The applicant in the month of July 1995 also adopted the trademark NORKIN with the suffix PLUS (label) in respect of "medicinal, pharmaceuticals, ayurvedic, herbal, homeopathic medicines" and to gain the statutory rights in the said trademark, the application filed an application for registration of the trademark NORKIN PLUS (label) in respect of medicinal, pharmaceuticals, ayurvedic, herbal, homeopathic medicines includes in class-5. The same was allotted application no. 1914722 claiming user since 01/06/1995.
IV. The applicant has been advertising its medicinal products under the said trademarks NORKIN and NORKIN PLUS(lebel) in trade journals and others promotional literature which have been extensively distributed to a large number of practicing doctors, hospitals, chemist shops and institutions, pharmaceuticals and drug stores throughout the country.
V. The applicant since the year 1995 has been continuously and extensively manufacturing and marketing its said pharmaceutical preparation throughout India on a very large scale and has still and has till date sold goods bearing the marks NORKIN and NORKIN PLUS (LABEL) for a value exceeding several crores of rupees. A statement of yearly sale under the trademarks NORKIN and NORKIN PLUS (LABEL) from the year 1995 to 1996 till date.
VI. On account of superior quality of the said goods and due to the continuous use of the said trade mark NORKIN since the year 1995, the said trademark has acquired a unique reputation and valuable goodwill in the eyes of the medical profession, pharmaceutical industries and general public at large and the said goods are exclusively associated with the applicant.
5. The respondent no. 1 has secured a registration of an identical mark NORKIN under no. 1062931 dated 26.11.2001 in respect of "medicinal and pharmaceutical formulations" with claim of 'proposed to be used'
6. It is alleged that respondent no. 1 had no intention of ever using the said trade mark in commerce and in fact no commercial use of the said mark has been made till date and the instant registered mark of the respondent no. 1 is liable to be removed from the registration.
7. It is claimed by the applicant that the applicant being the prior adopter and prior user of the trademark NORKIN in class -5 in respect of pharmaceutical and medicinal products, is a person whose interest would be substantially damaged if the impugned mark of the respondent no. 1 remains on the Register of Trade Mark and for this reason the applicant is a 'person aggrieved' under the provision of Section - 47 & 57 of the Act.
8. The grounds of cancellation raised by the applicant are as follows:-
I. The respondent no. 1 has never used the said impugned mark NORKIN, the applicant came to know about the existence of the said impugned registered mark only in the second week of February 2015, while conducting a regular search in respect of the said trademark. In fact, as aforementioned, the applicant honestly and bonafidely adopted the trade mark NORKIN in the year 1995 in respect of its pharmaceutical preparations and the applicant has been continuously and extensively using the same throughout India and abroad on a very large scale. In view of section 57 of the Trade Marks Act ,. Thus, the applicant is a person aggrieved; as the said registration illegally stands in the name of respondent no. 1 and it would hamper the day to day activities and commercial business of the applicant.
II. The applicant company in 1995 itself started manufacturing pharmaceutical products under the trademark NORKIN. The respondent no. 1 on the other hand has fraudulently secured a registration of an identical mark NORKIN under no. 1062931 dated 26/11/2001 in respect of "medicinal and pharmaceutical formulations" and that too as a 'proposed to be used' mark.
III. The respondent no. 1 has alleged the mark was registered as proposed to be used. The said trade mark NORKIN has already been adopted, used and applied for registration by the applicant in respect of identical goods under no. 687079 dated 16/11/1995 in class 5 and the said impugned registration of the respondent no. 1 is clearly violative of the provision of Section 11 of the Act.
IV. The respondent no. 1 on the date of filling of the application did not have any intention of using the said mark in respect of the claimed specification of goods and no use thereof of the same has been made by the respondent no. 1 within the statutory period and for this reason also the impugned registration in favour of the respondent no. 1 liable to be taken off the record in terms of Section 47(l)(a) of the Act.
V. The respondent no. 1 has never used its said impugned registered mark NORKIN and more particularly the said mark NORKIN has not been in use for a period of more than 5 years 3 months as of date in relation to the goods for which the said mark has been registered and therefore the said impugned registered trade mark is liable to be removed under the provision of section 47(l)(b) of the Act.
VI. The registration granted to the respondent no. 1 in contravention of Section 9(l) (a) of the Act in as much as in view of the existence of the prior adopted and prior used identical trade mark NORKIN of the applicant. The Impugned mark of the respondent no. 1 is devoid of any distinctive character and is not capable of distinguishing the goods of the applicant from those of the respondent no. 1 and is therefore the registration granted to the respondent no. 1 is contrary to the statutory provision of Section 9(1) of the Act.
VII. The registration granted to the respondent no. 1 of the impugned mark was in total disregard of the mandatory provisions of Section 9(2) & 11 of the Act also. The impugned registered mark of the respondent no. 1 is identical to the prior adopted and prior used identical trade mark NORKIN of the applicant and also the goods in respect of which the said impugned mark is registered are identical and hence there is bound to be confusion and deception amongst the traders and consumers.
VIII. The claim of the respondent no. 1 be the proprietor of the said impugned trade mark is false. The registration was obtained by fraud and by making false and misleading statements and representations regarding the alleged proprietorship of the said impugned mark. The respondent no.1 is not and cannot claim to be the proprietor thereof of the said impugned identical registered mark within the meaning of Section 18(1) of the Act.
IX. When the impugned mark, registered in the name of the respondent no.1, was published in the Trade Marks Journal, the same escaped the attention of the applicant and moreover the applicant did not anticipate that despite having an earlier trade mark in its favour, a subsequently identical mark would be allowed to be registered in violation of the rights of the applicant and without any notice to the applicant who is original, prior adopter and prior user of the same. The impugned mark of the respondent no. 1 has been registered in bad faith, as the same was adopted and registered with the full knowledge and awareness of the prior adoption, prior used arid prior existence of the applicant's trade mark NORKIN. Therefore, the said impugned mark has mark registered without sufficient cause and is wrongly remaining on the register in the name of the registered proprietor.
9. The applicant claims itself to be prior adopter, prior and continuous user of the trademarks NORKIN/NORKIN PLUS which the applicant has been using since the year 1995. The applicant in support of its said claim has filed as Annexure -3, the first Drug Manufacturing License dated 20.04.1995. Show the continuous user of the said trademarks since the 1995. Thd claim of prior adoption and prior user by the applicant is even prior to the date of application for registration filled by the Respondent no. 1, i.e. 26.11.2001 and that
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too the respondent no. 1 had filed the said application as 'Proposed to be Used' mark. Thus, the respondent no. 1 cannot be and cannot claim itself to be either the proprietor of the said mark or the first adopter of the said mark or the senior of the said mark. 10. The respondent no. 1 on being served with the notice of the rectification petition chooses not to appear and to file the counter-statement. 11. The applicant has categorically stated on oath that the Respondent no. 1 has not used the registered trademark in respect of medicinal and pharmaceutical preparations. The claim of the applicant about non-user has gone unrebutted as the respondent no. 1 has not filed any evidence of user of the trade mark in question. 12. In order to mention mainly of register, we are of the view that the impugned trade mark was wrongly remaining on the register. 13. The present rectification petition filed by the applicant under no. ORA/149/2015/TM/CH is allowed. The registered trademark NORKIN under registration no. 1062931 in class-5 is removed accordingly. The respondent no. 2 is directed to remove the said registered trademark from register of the registered Trade Marks forthwith. 14. No Costs.