The Registrar of Trade Marks, Kolkata in the case of Dr. Sain's Laboratories v Wyeth (formerly known as American Home Products Corporation) at Five Giralda Farms refused registration to Dr. Sain's Laboratories (the Applicant) to have their trademark "'ZY-MOX" registered, on the ground that the said mark was deceptively similar to the Opponent's (Wyeth) earlier registered mark "'WYMOX" and as such the registration of the applicant's mark would lead to deception and confusion in trade and public at large.
In this case, the Applicant had applied for the registration of two trademarks that were opposed by the opponent as being deceptively similar to their proprietary marks. They had filed for the trademark 'ZY-MOX' vide application number 1519058 under class 5 on 11/01/07. And the same trademark ('ZY-MOX') was applied for on 22/02/07 vide application number 1533235 for goods under class 5 (Medicinal and Pharmaceutical preparations). For both the marks the applicant claimed usage since 10/02/98.
In July 2008, the Opponent filed two oppositions with respect to the abovementioned applications. Their objections related to the fact that they are the registered owners of the impugned trademark 'WYMOX' used in relation to 'medicinal and pharmaceutical preparations'. They claimed usage of their trademark since 30/07/1984 and also that due to such long use, their mark had attained tremendous reputation and goodwill amongst the members of public, and the trade and medical professionals in India had come to associate the trademark "WYMOX" exclusively with them. Further, they submitted that the applicant's mark was visually, structurally and phonetically deceptively similar to their trademark. The opponents further alleged that the applicant's act was mala fide in order to trade on the Opponent's worldwide famous mark.
In their defence, the applicants denied various averments of the Opponent. They stated that they had honestly adopted and coined the impugned mark in 1998 and had been using it ever since. As a result of such long use, they stressed that their mark had acquired sufficient reputation and goodwill. They also refuted the Opponent's claim that the two marks were visually and phonetically similar.
The Registrar of Trademarks, in deciding over the matter, observed that while determining the similarity between the two marks and likelihood of deception or confusion factors such as the nature of the mark, the degree of resemblance of such marks with any of the existing marks and the nature of goods to which the marks apply are to be considered. He applied these factors to the present case and found that the only difference between the two marks are the letters "W and Z", which in the court's opinion could be easily slurred in pronunciation. Another factor that had to be considered while comparing two marks, was that they had to be compared as a whole and not be split into two component parts.
It was in this light that the Registrar found the applicant's mark identical to the Opponent's mark. He stated that the Applicant's very adoption of the mark 'ZY-MOX' was dishonest and registration of the same mark would be contrary to Section 11(1) and 12 of the Act. Accordingly, the application for registration was refused.
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