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Johnson & Johnson v/s Alkem Laboratories Ltd.

    ORA No. 296 of 2012/TM/MUM

    Decided On, 26 September 2018

    At, Intellectual Property Appellate Board

    By, THE HONOURABLE MR. JUSTICE MANMOHAN SINGH CHAIRMAN & THE HONOURABLE MR. SANJEEV KUMAR CHASWAL
    By, TECHNICAL MEMBER (TRADE MARKS)

    For the Applicant: Vinod Bhagat, Advocate. For the Respondent: None.



Judgment Text

Manmohan Singh, Chairman

The Applicant has filed the above mentioned application for the removal of trade mark "TYLEmOl" bearing no. 814753 in class 5 in the name of Alkem laboratories Ltd. From the register of rectification of Register under section 47/57/125 of the Trade Marks Act, 1999.

2. It is alleged by the Applicant that the trade mark "TYLEMOL" bearing number 814753 in Class 5 in the name of Alkem laboratories Ltd. has been wrongly registered and the registration of the impugned mark of the Respondent is erroneous as well as is against established principles of law.

3. Statement of facts as per the case of Applicant-

The Respondent has adopted a trade mark ""TYLEMOL"" which is virtually identical to the Applicant's trade mark "TYLEMOL" which has been in use and adopted pr. or to respondent trade mark. The trade mark "TYLEMOL" is structurally, visually and phonetically virtually identical to the trade mark "TYLENOL" except that the letter 'N' has been substituted by the letter 'M' Moreover, both the letters are structurally visually and phonetically virtually identical.

3.1 The Applicant, is a company incorporated and existing under the laws of the United States of America and is one of the leading and well-known manufacturers, sellers and the distributors of, inter alia, "pharmaceutical preparations" in Class 5 of the fourth Schedule to the Trade Marks Rules, 1999 (the Rules) made under the Act, for many years in India and various other countries. The Applicant has been carrying on the business of, inter alia, manufacturers, merchants, dealers and distributors of "pharmaceutical preparations" in India since the year 1957 and also in several countries of the world including its home country the United States of America.

3.2 The Applicant's predecessor, McNeil Laboratories commenced the business of compounding, selling and dealing in medicines in 1879, that is, in the nineteenth century, McNeil Laboratories was incorporated in 1932 and its focus was on the direct marketing of medicinal and pharmaceutical preparations and products.

3.3 The product bearing the name "TYLENOL ELIXIR" for children was introduced as the first aspirin free pain reliever in 1955 by the Applicant and the product became USA's best-selling analgesic, Johnson & Johnson, the Applicant herein acquired McNeil Laboratories in 1959 and in 1960 the product bearing the trade mark "TYLENOL" was approved for sale without a prescription changing forever the way people treat their aches, pains and fevers. "TYENOL" is the trade mark for a non-prescription painkiller and fever reducer. The trade mark TYLENOL was first used in 1955 and has been continuously and extensively used by the Applicant since then.

3.4 The product was launched in Canada in 1957. Thereafter, it was launched in Switzerland and Thailand in 1970, in Saudi Arabia in 1972, in the Philippines in 1980 in the Caribbean in 1981, in Australia and Mexico in 1989, in the Baltic countries and Korea in 1994, re-launched in the Philippines in 1994, in China in 1995, in Vietnam in 1998, in Japan in 2000. The product has been sold in many countries throughout the world and the sales turnover is increasing. The product is sold under various variants such as "Tylenol", "Tylenol Adult", "Tylenolchildrens", "Tylenol Cold Flu", "Tylenol Allergy", "Tylenolsore Thought", "Tylenol 8", "Tylenol Artheritles", "Tylenolp.M.", "Tylenol Sinus", "Tylenol For Women". Annexure "B" (collectively) are statements of the sales turnover of the products under the trade mark TYLENOL from the year 1997 through 2010. Hereto annexed and marked as Annexure "C" is a statement containing gross sales of the product bearing the trade mark "TYLENOL" from 1996 to 2006 in U.S.A.

3.5 The Applicant has expended large sums of money on advertisement and promotion of the said products. The trade mark "TYLENOL" is the essential and paramount feature of a large number of trade marks such as "Tylenol Cold And Flu Daytime", "Tylenol Sinus Caplets", "Tylenol Cold And Cough Nighttime", "Tylenol Ultra Relief', 'The Applicant has since applied for and obtained registration for the said trade mark in several countries of the world.

3.6 The product of the Applicant marketed and sold under the trade mark "TYLENOL" has also discussed in a number of medical books, journals and magazines. These books, journals and magazines are also circulated and read by persons, including medical professionals, in India. Since its launch, the medium of the Internet has been used as a primary source by the Applicant for disseminating information about "TYLENOL" to the member: of the medical profession and other members of the public.

3.7 By virtue of such extensive sales and sales promotion activities worldwide including India, the earlier trade mark "TYLENOL" of the Applicant has a very high recall value and is extremely well known and famous as a brand. By virtue of the Applicant's long, extensive and continuous use of the trade mark "TYLENOL", the Applicant has acquired a vast and enviable reputation and goodwill in the product bearing the trade mark "TYLENOL". The Applicant's trade mark "TYLENOL" has become a distinctive trade mark and is associated solely and exclusively with the Applicant and Applicant alone.

3.8 Since the launch of the product bearing the trade mark "TYELNOL" several decades ago, the products sold under the said trade mark have been making the news. The fame and reputation of the Applicant's trademark can be judged from the fact that references of the same can be found on several independent websites. Since the inception of the brand "TYLENOL", the Applicant has protected its brand equity in the trade mark. The Applicant maintains strict control over the manner in which the earlier trade mark is presented and portrayed. The Applicant also controls the quality of the goods provided under the trade mark "TYLENOL".

3.9 The trade mark "TYLENOL" is one of the most valuable assets of the Applicant and in order to safeguard and protect the equity and rights in the mark "TYLENOL", the Applicant has vigorously defended it against potential infringements, attempts at passing-off and dilution globally it is pertinent to mention that the Applicant has successfully instituted opposition and cancellation proceedings against unscrupulous entities attempting to derive pecuniary benefit by passing off their products under trademarks deceptively similar to TYLENOL Marks.

4. The Applicant has even taken action before the WIPO, against third parties who had registered domain names containing the well-known trademark "TYLENOL". The Applicant has tracked a 100% record of favourable orders and all domain names blocked by third parties containing the well-known trademark "TYLENOL" have been rightfully and successfully transferred to the Applicant.

5. That by virtue of the extensive use, promotion and sales of goods bearing the earlier trade mark, and by virtue of the high quality of such goods, the Applicant has acquired substantial goodwill and reputation in its earlier trade mark "TYLENOL". The , earlier trade mark has come to be exclusively associated and identified in the minds of the public and others connected with the trade, with goods originating from the Applicant and Applicant only. The Applicant enjoys exclusive proprietary rights in and to the earlier trade mark "TYLENOL".

6. From the mentioned placed on record, It is clear to us that, the Applicant's earlier trade mark has attained the status of being a "well-known" trade mark within the provisions of Article 6 bis of the Paris Convention which finds statutory mention under Sections 2 (zg) and 11 (2 and 6-10) of the Act. Under such circumstances, the unlawful adoption and/or unauthorized use of an identical or a deceptively similar mark in respect of same / similar / cognate / allied / dissimilar goods / services by any third party is bound to create confusion and/or deception in the course of trade.

7. There can be no element that the Applicant-is the proprietor of the trade mark "TYLENOL" used upon/ in respect of medicinal and Pharmaceuticals and which has been use over many decades which is much prior to the date of adoption of the impugned mark by the Respondent. The trade mark "TYLENOL" has been used extensively and continuously for over five decades in various parts of the world. The Respondent has adopted the impugned mark ""TYLEMOL"" which is virtually identical to the Applicant's earlier and well-known trade mark "TYLENOL" and in respect to similar goods for which the Applicant attained earlier trade mark "TYLENOL".

8. It is alleged that it came to knowledge of the registration of the impugned trade mark "TYLEMOL", when the Respondent initiated a frivolous opposition against the Applicant's application for the mark 'TYLENOL" bearing no. 1548042 in class 5, wherein the Respondent relied on their wrongfully attained registration for the mark "TYLEMOL" bearing no. 814753 in class 5.

9. The Respondent has admitted to the similarity of the marks in the said opposition matter. It is further submitted that the Applicant is the prior adopter and user of the trade mark "TYLENOL" and' the Respondent herein has subsequently adopted a virtually identical mark "TYLEMOL" and wrongfully attained registration thereafter.

10. The Applicant would suffer grave and irreparable damage and loss if the trade mark "TYLEMOL" remained therein. The Applicant's legal right would be limited as a result of the trade mark "TYLEMOL" remaining on the Register and the Applicant's application for the trade mark "TYLENOL" has been stalled by the Respondent on frivolous grounds. The Applicant is therefore an aggrieved person under section 57(2) of the Act. Even otherwise, admittedly the respondent no. 1 itself has filed the opposition to the Trade Mark of the Applicant.

11. The respondent has entered the same trade as the Applicant, wherein the Applicant has made a mark for itself and the Applicant is therefore aggrieved by the said entry remaining on the Register, as the Applicant's right to use the trade mark "TYLENOL" and other variants is hampered and adversely affected. The Applicant, is therefore a person aggrieved within the meaning and provision of Section 57 of the Act, and as such is entitled to apply for rectification of the register.

12. The claim of the Applicant has not been denied by the respondent no. 1 who failed to file any evidence to establish any user i.e. prior to the application or after. The object of the Trade Marks Act is to provide for the registration and better protection of trademarks and for the prevention of the use of fraudulent trademarks. In view of the same, the impugned mark of the Respondent is ought to be removed from the Register.

13. It is correct alleged that the trade mark "TYLENOL" has been registered and used extensively and continuously for over many decades in many countries in world in respect of drugs and pharmaceutical products and advertised in magazines and journals. Such documentary evidence has been circulated and received in India and therefore, the Applicant respectfully submits that the registered proprietor had or ought to have had full knowledge of the existence of the well-known trade mark "TYLENOL" when they dishonestly and slavishly adopted the trade mark "TYLEMOL".

14. The trade mark "TYLEMOL" is structurally, visually and phonetically virtually identical to the trade mark "TYLENOL" expect that the letter 'N' has been substituted by the letter 'M'. Moreover, both the letters are structurally visually and phonetically virtually identical. Therefore, the Applicant submits that the impugned trade mark is wrongly remaining on the Register in contravention of the provisions of the act and, above all, adversely affecting the interest of the public, it would lead to confusion as it is more than likely, due to imperfect recollection, that the average buyer may confuse the Respondent's "TYLEMOL" as the Applicant's product sold under "TYLENOL".

15. In view of such similarities between the nature of the marks and their goods, their trade channel and counters, there exists a strong likelihood of confusion on the part of the consuming Public, including an association, as they are likely to assume and confuse that the Respondent's products are connected or otherwise associated with the Applicant goods, when no such connection exists. Consequently, the members of the trade would no doubt, be under the mistaken belief that the Respondent's goods originate from the Applicant or that they have some trade connection or affiliation thereby causing irreparable loss and damage not only to the Applicant's trade and business but also suiting in garnishment and erosion of distinctiveness hard earned by the Applicant in their world renowned brand "TYLENOL".

16. The Hon'ble Supreme Court of India has held in the matter of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. Reported in 2001 PTC 300 SC that public interest supports lesser degree of proof showing confusing similarity in the case of trade mark in respect of medical products as against other non-medicinal products. Noting the frailty of human nature and the pressures placed by society on doctors there should be as many indicators as possible to distinguish two medicinal products from each other.

17. From the above, it is clear to us that the impugned trade mark has been wrongly registered and it wrongly remains on the Register. It is humbly submitted that the registration of the impugned trade mark of the Respondent is erroneous and is against established principles of law laid down by the Hon'ble Supreme Court of India and Hon'ble High Courts of Delhi and Calcutta as the other Hon'ble High Courts.

18. The registration of the impugned mark ""TYLEMOL"" is likely to dilute the distinctive character of the Applicant's earlier and well-known trade mark "TYLENOL" and the same is likely to be debased and eroded. Such debasement and erosion of the reputation and goodwill strikes at the very root of its existence and is not measurable in terms of money and cannot be adequately compensated monetarily.

19. It appears to us that the Applicant's earlier trade mark "TYLENOL" and the Respondent'smirk "TYLEMOL" are virtually identical and it is evident that the Respondent has deliberately chosen the impugned mark in an effort to ride upon the goodwill and reputation of the Applicant. And the registration of the impugned mark is contrary to section 9(1)(a) 9(2)(a) of the Act 1999. Further the Respondent's adoption of the mark "TYLEMOL" besides being prejudicial to the Applicant's interest would also dilute the distinctiveness of trade mark "TYLENOL" as the impugned mark "TYLEMOL" is virtually identical to the Applicant's earlier and well-known trade mark "TYLENOL" The registration of the impugned mark is contrary to the provisions of section 11(1) of the Act.

20. The Respondent had no bona fide intention to use the mark on the goods covered thereunder and that there has, in fact, been no bona fide use of the said trade mark in relation the goods indicated in the specification of the said registration within the meaning of Section. 47(1)(a) of the Act. The use, if any, is patently mala fide since the mark has been dishonestly adopted. The impugned mark is, therefore, liable to be removed from the Register.

21. There is no evidence of user produced by the respondent, thus it is clear that up to a date of three months before the date of this application for rectification, a period of five years or longer as elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by the respondent thereof for the time being. The adoption of the impugned mark by the respondent is not honest and the Respondent cannot therefore claim to be the proprietor of the impugned mark under section 18 (1) of the Act.

22. it is submitted that the registered impugned mark "TYLEMOL"" in respect of medicinal and pharmaceutical preparations and substances included in class 5" has been entered in the Register of Trade Marks without any sufficient cause and is remaining on the Register wrongly and has been adopted and registered by the Respondent with malafide intention and by keeping the Learned Registrar in the dark regarding the fraudulent and misleading adoption of the impugned mark.

23. The entry relating to the impugned mark ""TYLEMOL"" in the name of the Respondent has been wrongly made and continues to wrongly remain on the Register and liable/to be removed and / or rectified from the Register. Further the registration of the impugned mark remains on the Register without sufficient cause and the Respondent is not the proprietor of the impugned mark and the impugned registration is therefore contrary to the provision of section 18(1) of the Act.

24. While checking the record of the Trademark Registry,

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the respondent has applied the impugned Trademark as proposed to be used subsequently again it has been renewed by the Trademark registry again as proposed to be used. As per the 5 record, in our opinion the respondent has not submitted any document showing use of the mark except claiming renewal. In the instant case no financial loss or otherwise will cause to the Respondent no.1 as the Respondent no 1 has not been using this impugned mark for their medicinal products rather in our view the impugned mark has been registered to just to block the entry of the register, so the original adopter may not be able to obtain the registration of their mark. As such, it is abundantly clear from the records that the Respondent had no bona fide intention to use the mark on the goods covered thereunder further there has been no documents to show the is being use in trade and commerce, in fact, the respondent has not been able to prove bona fide use of the said trade mark in relation the goods indicated in the specification of the said registration, thus impugned registration comes under the ambit and meaning of Section 47(1)(a) of the Act 1999. It is adoption of the impugned mark is patently mala fide since the mark has been dishonestly adopted. The impugned mark is, therefore, liable to be removed from the Register. 25 In view of section 57 of the Act, the Applicant is the "person aggrieved" and is thus entitled to file this petition and there are sufficient grounds for removal and/or rectifying the registered impugned trade mark from the register on account of the foregoing reasons. 26. In view of the above mentioned facts and circumstances the impugned trade mark being ho. 814753 is expunged from the Register. 27. Copy of the order be sent to respondent no. 2 who shall take the necessary steps to remove the mark as the prayer made in the petition is allowed.
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