HONBLE SHRI SANJEEV KUMAR CHASWAL TECHNICAL MEMBER (TM)
1. The appellant has filed a present appeal under Section 91 challenging the order passed by the respondent No.1 on 8.01.2013 in the Application No. 1765752 in Class 5, the said impugned order appears to be passed by the respondent after receipt of the TM-15 on 03.01.2013 but actually it was passed by the ld. Registrar on 18.09.2012. As such the present appellant is being aggrieved and dissatisfied with the said order dated 28.7.2014 passed by the learned Registrar of Trade Marks at Ahmadabad. Facts of the Case :-
2. The appellant M/s Pulse Pharmaceuticals Pvt. Ltd., an Indian National Company incorporated under the Companies Act, 1956. The Appellant is in to the business of Manufacturing and trading of Pharmaceutical goods, being aware of importance of the Intellectual Property Rights, the appellant has registered several trademarks and many of them are in the process of registration. In such direction the Appellant had applied for the registration of the Trade Mark SAFEGUARD in class 05 on 19th December 2008 and had been allotted the application No. 1765752 by the Trade Marks Registry, Chennai.
3. The appellant company had honestly adopted the said Trade Mark after meticulous enquires in the market and had spent enormous amount of money towards advertising and promoting the said Trade Mark. The aforesaid Trade Mark has been in usage since 17/05/2007. Thereby the appellant company is continuously and extensively using since then for a long period of time, thus has acquired distinctiveness and the said trade mark has attained the secondary meaning. Further the said product confirms to good standards of quality and thus enjoys valuable goodwill and reputation amongst the public in general. The product of the Appellant is identified by the Appellant Company only and none else.
4. The Registrar of Trade Marks, Chennai had issued an examination report upon the application for registration of the said Trade Mark, wherein it was reported that the aforesaid mark was open to objection under sections 11 and had requested to submit the Company's response/submissions and subsequently the Appellant has replied to the said examination report. Thereafter the Learned Registrar of Trademarks, the Respondent here in had issued an order dated 05/ 12/2012, wherein it was stated that the said Trade Mark applied for was objectionable under 9/ 11 and was accordingly refuse & upon the order of the Learned Registrar the Appellant had filed TM-15 to seek the grounds of refusal.
5. It is submitted that upon the application under TM-15, the Respondent here in has issued the impugned order vide TLA 3031 dated 08.01.2013, which is received by the Appellant on 16.01.2013, which is under challenge in the present proceedings.
6. The appellant product is a pharmaceutical product which is being used in the market since the year 2007, the reasons for coining The reasons for coining the brand name "Safeguard the basic composition of the product is Diclofenac Sodium + Misoprostol, where diclofenac is a non-steroidal anti-inflammatory drug (NSAID) taken to reduce inflammation and as an analgesic for reducing pain in conditions such as arthritis or acute injury and can also be used to reduce menstrual pain (dysmenorrheal). the Misoprostol is a drug That is used for the prevention of non- steroidal anti-inflammatory drug induced gastric ulcers, for early abortions, to treat miss carriage and to induce labour.
7. Therefore the product is being marketed for the above said indications where the product "SAFEGUARD" safeguards the stomach from gastric ulcers, while controlling the pain. The reason for adoption of the said Trademark is that it is easy for pronunciation by the doctors and the patients. The Trademark is the one word and there is no break of words SAFE and GUARD. The apex court time and again arid that the Trademark shall be considered as a whole and it shall not be dissected and compared.
8. The Trademarks reflected in the examination Report are either refused or opposed and the identical trademarks are for different goods altogether. The Appellant Trademark is for different goods and is having the users status unlike other trademarks. The Appellant Trademark has attained the secondary meaning in the market for its quality goods. The Appellant trademark is different from trademarks as to that of the other identical trademarks reflect the examination report. Though goods of the other users are quite different from the appellant.
9. The Registrar has invoked section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 and has stated in his order that the mark is high ly descriptive and it has direct reference to the goods applied further the mark designate the kind and quality of the goods and hence is not capable of distinguishing the applicant goods from the goods from others. The ld registrar has further stated in his order that though the applicant has claimed user of the year 2007 filed an application in the year 2009. The appellant has subm9itted user affidavit and there is no such supporting document to show the use claimed by the applicant. Hence the appellant has failed to establish that the trademark has acquired any distinctive character.
10. That after going through the documents submitted by the appellant, in our considerable opinion, two issues emerged from the pleadings of the appellant one that the learned Registrar has refused the application of the appellant herein mechanically by invoking section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 without considering the evidence in holistic manner, secondly the learned Registrar has further failed to take the cognizance of the subsequent trademark application trade mark Application No. 1834390 in class 5 on 29.6.2009 for trademark SAFEGUARD 72 of the M/s Heal All pharmaceuticals applied for registration of and said application has been accepted and mark has been duly registered by the same trade mark Office for Medicinal and Pharmaceutical Preparations.
11. In our considered view, the invoking of the section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 for the appellant application cannot sustained when the registrar had allowed subsequent application trade mark Application No. 1834390 in class 5 on 29.6.2009 for trademark SAFEGUARD 72 of the M/s Heal All pharmaceuticals for the same mark, the merely including of numerical value of 72 with the descriptive mark SAFEGUARD 72 does not enhance the value of the trademark of the subsequent applicant for registration, as we are also surprised how the subsequent applicant has able to clear the hurdle of the section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 and why same yard stick was not followed on subsequent application for registration by the by invoking section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 on same mark SAFEGUARD 72. The registrar has also allowed another application SAFEGUARD RTU for pesticides product including other products registered under trademark SAFEGUARD as mentioned above. It shows the Registrar has been deciding application in cavalier manner and not on merit of the each case.
12. While seeing the online status of the trademarks, it clearly shows that the registrar has selectively allowing the registration of the trademark SAFEGUARD having added numerical values which make trademark SAFEGUARD out of descriptiveness, it clearly shows that the registrar selectively allowing the registration of the trademark SAFEGUARD and in some cases selectively rejecting the said trademark SAFEGUARD ignoring the invoking of the section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 for other subsequent applications.
13. In our considered view the Ld. Registrar has been using discretion selectively and mechanically disregarding the objections under the section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999. In our considered opinion the Learned Deputy Registrar erred in relying on that the appellant has not adduced any substantive material to substantiate his right. The order of the learned Registrar is against the principles of natural justice as he has arrived at a conclusion without considering the documents on record and further without giving an opportunity to the appellant to be heard. The Ld. Registrar cannot invoke selectively objections under the section 9(1) (a)(b) and section 11(1)(a)(b) of the Trademarks Act 1999 in mechanical manner and selectively, rather each application before presented before him requires detail examination.
14. As in the case of the Supreme Court on the point and that is the decision in Govind Rao v. State of Madhya Pradesh [A.I.R. 1965 S.C. 1222] The Supreme Court held that the necessity to give reasons was an elementary requirement of quasi-judicial process and since the order of the Government did not fulfill this elementary requirement, it was liable to be set aside. This decision to our mind is direct authority for the proposition that every quasi-judicial decision must be supported by reasons and no further authority is necessary in support of the proposition.
15. Keeping of the extensive decision and principle rendered by the Apex court with regard to exercising judicial powers by quasi judicial authority that every administrative officer exercising quasi-judicial functions is bound to give reasons in support in support of the order he makes
16. During the course of hearing arguments of appellant, the two aspects has not dealt in detail by the Respondent in his order dated 28.7.2014 as such the appellant has merit in his arguments, as the Respondent has not even communicated the order of rejecting the application but it was communicated only after filing of TM-15 by the appellant herein. In our view the learned Registrar is quasi-judicial authority as he is deciding the fate of the application, as such the learned Registrar has to consider all aspects of the pleadings including documents, evidences, if any before passing the order, the order must be details with all reasoning, the learned Registrar cannot pass one liner order as being quasi-judicial authority.
17. In our considered opinion the Learned Deputy Registrar erred in relying on that the appellant has not adduced any substantive material to substantiate his right. The order of the learned Registrar is against the principles of natural justice as he has arrived at a conclusion without considering the documents on record and further without giving an opportunity to the appellant to be heard. Further while checking the status of the application the online status shows that the trademark application has been abandoned, which is quite contrary to the order passed by the Ld. Registrar.
18. In view of the above, after going through the pleadings and supported documents attached with the appeal it cleanly emerges that the Ld. Registrar has not followed the principles as laid down above hence we are constrained to allow the present appeal in the Application No. 1765752 in Class 5, the said impugned order vide TLA 3031 dated 08.01.2013 appears to be passed by the respondent is set aside.
19. The copy of the order is sent to the Registrar of Trade Marks for information and to take the necessary steps. The Registrar of Trademarks shall decide the above said application for registration of trademark in accordance to its own merit.
20. No costs. -SD- -SD- (SANJEEV KUMAR CHASWAL) (JUSTICE MANMOHAN SINGH) TECHNICAL MEMBER CHAIRMAN