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
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