The case involves a dispute over the trademark 'CANDEX-B' applied for by the first respondent, Mrs. Karlin Pharmaceuticals, for pharmaceutical products in Class 5. Glenmark Pharmaceuticals, the appellant, opposes the registration of 'CANDEX-B', claiming it is confusingly similar to their existing trademark 'CANDID', which has been in use since 1978-79 for dermatological products.
The appellant argues that the first respondent's adoption of 'CANDEX-B' was dishonest and in bad faith, capitalizing on the goodwill of 'CANDID'. They also argue that the first respondent did not conduct a trademark search before adopting the mark, and that the marks are likely to cause confusion among consumers. The appellant requests the court to set aside the registration of 'CANDEX-B', order the first respondent to bear the costs, and prevent the issuance of the registration certificate pending the appeal.
The first respondent contends that they have been using 'CANDEX-B' since 1997 and are entitled to the benefits of Section 12 of the Trade Marks Act as an honest and concurrent user. They argue that both trademarks are derived from the name of the disease candidiasis and that there is no likelihood of confusion.
The court, after considering the arguments and evidence, concludes that the first respondent's use of 'CANDEX-B' is not bona fide and does not qualify as honest and concurrent use under Section 12. The court finds that there is a likelihood of deception or confusion among the public due to the phonetic similarity of the trademarks and their use in relation to similar products. The court also considers the subsequent declaration of 'CANDID' as a well-known trademark and the importance of preventing confusion in pharmaceutical products.
The court sets aside the impugned order and cancels the registration of 'CANDEX-B', directing the removal of the entry from the register of trademarks
Case Citation: Glenmark Pharmaceuticals Ltd. Vs Mrs. Karlin Pharmaceuticals & Exports Private Limited: 12.07.2024: (T) CMA (TM) No.40 of 2023: Madras High Court: Senthil Kumar Ramamoorthy: H.J.
Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
