Stadmed Private Limited sought for registration of ‘Zytrin’ in respect of pharmaceutical and medicinal preparations. The mark was proposed to be in use since the date of application. The mark was subsequently advertised in the Trade Marks Journal before acceptance under Section 20(1) of the Trade Marks Act, 1999.
Abbott Laboratories, a leading organization in the field of healthcare and proprietors of several marks including ‘HYTRIN’, filed for an opposition against the preparation ‘Zytrin’. They claimed to be registered proprietors of Hytrin since 1983, in various countries, which is said to be a well-known trademark. Under these circumstances, the registration of ‘Zytrin’ was said to be likely to cause confusion or deception, in pursuance of which they prayed for its prohibition u/s 11 r/w s-12 of the Trade Marks Act.
Abbott contended that Stadmed had adopted the impugned mark in order to benefit from the goodwill and reputation as enjoyed by them. They also took objections to the registration under Sections 9,11, 12 and 18 of the Act and prayed for discretion of the Tribunal.
Stadmed denied the averments of Abbott stating that there were several marks using the suffix ‘TRIN’ which is common to the trade and that the prefixes are not same and similar. Abbott stated that the goods were same and similar and therefore registration of the impugned mark is prohibited u/s 12 of the Act. Stadmed refuted these arguments stating that the rival marks could not be held similar since the prefixes were different and that they had started using the mark since 2002.
The Tribunal concluded that the rival marks were phonetically, visually and structurally similar and that they needed to be more careful with regard to pharmaceutical products to prevent hazardous consequences. The Tribunal further considered their intent to use the mark since the date of application, and that no harm or prejudice would result in case they were rejected registration. They further stated that being deceptively similar u/s 2(1)(h) of the Act and Abbott’s objection to registration u/s 11 of the Act, the applicants were held to be incapable of claiming relief under Section 12 of the Act. The Opposition to the registration of the Mark was allowed.
© Lex Orbis 2006
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