Descriptive medicinal trade mark and likelihood of confusion justified rectification; delay was condoned for sufficient cause.

A descriptive trade mark derived from the basic drug name was treated as lacking inherent distinctiveness, and the absence of ? no, avoid non-English. The respondent's admission and the record were insufficient to show acquired distinctiveness or secondary meaning, so the registration was liable to removal. Applying overall similarity, visual, structural and phonetic resemblance, the rival marks were also found likely to confuse purchasers of medicinal goods. The applicant was accepted as a person aggrieved because it operated in the same line of business and the registration prejudiced its interests. Delay in filing the reply was condoned on sufficient cause, as the explanation showed no negligence or lack of bona fides.

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Issues: (i) whether the applicant was a person aggrieved with locus standi to seek rectification; (ii) whether the impugned trade mark was liable to removal from the register for being descriptive and lacking distinctiveness, and whether the rival marks were deceptively similar so as to create confusion; (iii) whether delay in filing the reply to the counter-statement should be condoned for sufficient cause.

Issue (i): whether the applicant was a person aggrieved with locus standi to seek rectification.

Analysis: The expression "person aggrieved" was construed liberally, but with a direct link between the applicant and the grievance. As the parties were in the same line of business, dealt in similar goods in the same class, and the impugned registration had a prejudicial effect in infringement proceedings, the applicant was substantially interested in removal of the mark from the register.

Conclusion: The applicant was held to be a person aggrieved and had locus standi to maintain the rectification application.

Issue (ii): whether the impugned trade mark was liable to removal from the register for being descriptive and lacking distinctiveness, and whether the rival marks were deceptively similar so as to create confusion.

Analysis: A mark derived exclusively from the basic drug name was treated as descriptive and not inherently distinctive. The respondent's own admission that its mark was derived from the basic drug was treated as decisive, and the material on record was found insufficient to show acquisition of distinctiveness or secondary meaning. Applying the settled test of overall similarity, visual, structural and phonetic resemblance, the rival marks were found likely to confuse purchasers of medicinal products. The plea based on relative grounds under Section 11(2)(a) did not succeed for want of the necessary foundation of a well-known mark.

Conclusion: The impugned registration was held to be contrary to Section 9 and liable to expunction, while the challenge under Section 11(2)(a) failed.

Issue (iii): whether delay in filing the reply to the counter-statement should be condoned for sufficient cause.

Analysis: The explanation based on the conduct of the previously engaged lawyer and the correspondence placed on record was accepted. No negligence, inaction, or want of bona fide was attributed to the applicant, and the delay was treated as satisfactorily explained.

Conclusion: The delay was condoned and the reply and accompanying documents were taken on record.

Final Conclusion: The rectification application succeeded and the impugned registration was ordered to be removed from the register, with the delayed rejoinder admitted and no order as to costs.

Ratio Decidendi: A descriptive trade mark lacking proved acquired distinctiveness cannot remain on the register, and in medicinal goods even a close overall similarity creating a likelihood of confusion justifies rectification; delay may also be condoned where sufficient cause is shown without negligence or lack of bona fides.

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