(Oa/7/2012/Tm/Ch) vs Deputy Registrar Of Trade Marks
2023 Latest Caselaw 10647 Mad

Citation : 2023 Latest Caselaw 10647 Mad
Judgement Date : 17 August, 2023

Madras High Court

(Oa/7/2012/Tm/Ch) vs Deputy Registrar Of Trade Marks on 17 August, 2023

    2023:MHC:3784

                                                                             (T)CMA(TM).No.33 of 2023

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED: 17.08.2023

                                                     CORAM

                                  THE HONOURABLE MR.JUSTICE SENTHILKUMAR
                                              RAMAMOORTHY

                                            (T)CMA(TM).No.33 of 2023
                                               (OA/7/2012/TM/CH)

                  BASF SE
                  Carl-Bosch-Strasse 38,
                  Ludwigshafen am Rhein,
                  Germany.
                  (Amended as per order dated 30.03.2012)                         ...Appellant

                                                        Vs.

                  1. Deputy Registrar of Trade Marks,
                     Trade Marks Registry
                     I.P.Building, Guindy,
                     Chennai – 600 032.

                  2. Apex Laboratories Limited
                     No.38, C.P.Ramaswamy Road,
                     Alwarpet,
                     Chennai – 600 018.                                           ...Respondents

                  Prayer: Transfer Civil Miscellaneous Appeal (Patents) filed under Section 91
                  of the Trade Marks Act, 1999, praying the order of the first respondent dated 1st
                  July, 2010 be set aside and the application be restored to file and proceeded as
                  per rules.


                  Page 1 of 6



https://www.mhc.tn.gov.in/judis
                                                                                (T)CMA(TM).No.33 of 2023




                                  For Appellant     :      Mr.P.Siddarth
                                                           for M/s.Depenning and Depenning

                                  For R1            :      Mr.S.Janarthanan
                                                           Senior Panel Counsel

                                  For R2            :      Mr.R.Sathish Kumar



                                                        JUDGMENT

The appellant impugned the order dated 01.07.2010 by which the

appellant's application for registration of the Trademark F-500 in relation to

fungicides and herbicides was refused on the basis of the opposition filed by

the second respondent herein.

2. The opposition was filed on the ground that the mark of the appellant

is likely to cause deception and confusion on account of the use of a similar

mark by the second respondent in relation to pharmaceutical products.

3. The appellant has submitted an affidavit affirmed by Mr.R.R.Nair, an

authorised representative of the appellant. In the affidavit, in relevant part, it is

https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023

stated as under:-

"2. I submit that the instant Appeal has been filed by the Appellant as against the impugned order passed by the 1st Respondent dated 01.07.2010 whereby the 1st Respondent has allowed the opposition (MAS-715554) filed by the 2nd Respondent and had refused registration of the Appellant's trademark 'F 500' bearing Application No.932422 in Class -5. I submit that the 2nd Respondent's goods are pharmaceutical preparation and are for human consumption.

3. Therefore, in order to avoid any confusion with the goods of the 2nd Respondent, the Appellant hereby undertakes that the mark 'F 500' shall not be put to use in respect of any goods that are for human consumption."

4. On instructions, after examining the said affidavit, learned counsel for

the second respondent submits that the second respondent is withdrawing its

objections subject to the incorporation of the condition/limitation set out in

paragraph 3 of the affidavit.

5. In view of the above developments, it is unnecessary to adjudicate the

appeal on merits. Instead, it is sufficient to direct the first respondent to

https://www.mhc.tn.gov.in/judis (T)CMA(TM).No.33 of 2023

reconsider the application subject to the incorporation of condition/limitation in

line with the statement recorded in paragraph 3 of the affidavit.

6. Therefore, (T)CMA(TM) No.33 of 2023 is disposed of by setting

aside the order dated 01.07.2010 and directing the first respondent to

reconsider the application of the appellant subject to the incorporation of a