Mr. Hemant Daswani, Ms. Saumya Bajpai, Advs v. ZHEJIANG YIGE ENTERPRISE MANAGEMENT GROUP CO

Judgment

1. The appellant, has preferred the present appeal under Section 91 of the Trade Marks Act, 19991 assailing the order dated 29.05.20232, passed by the learned Deputy Registrar of Trade Marks3, whereby its opposition 1 hereinafter referred to as “TM Act” 2 hereinafter referred to as “impugned order” 3 hereinafter referred to as “respondent no.2” C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05 proceedings against the registration of the impugned mark 4 filed under application no.4330041 in Class 5 has been dismissed. BRIEF CONSPECTUS: 2. The appellant, Mankind Pharma Limited, a integrated pharmaceutical company involved in the business of manufacturing and marketing of a wide range of medicinal, pharmaceutical, veterinary preparations as also therapeutic product ranges under various brand names, including under the trademark ‘FLORA’, coined in the year 1995. 3. For carrying on with its business activities, the appellant has in the year 2007, under application being no.1554350, been granted registration for the trademark ‘FLORA’ in India under Class 5 with a user claim since 1995 in respect of pharmaceutical preparations for the treatment of ‘diarrhea’ and related health products. In fact, the appellant has been continuously and uninterruptedly using trademark ‘FLORA’ for medicinal and

pharmaceutical preparations since its adoption for the first time in the year

1995. 4. In contrast, the respondent no.1 has on 21.08.2019 under application no.43300415 applied for the mark ‘FLORASIS’ with respect to sanitary towels, anti-overflow, breast pads, baby napkins, sanitary pads, baby’s diapers in Class 5 on a ‘proposed to be used’ basis. 4 hereinafter referred to as “FLORASIS” 5 hereinafter referred to as “impugned application” C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05

5. Subsequent thereto, the appellant on 19.03.2020 filed its opposition proceedings being no.2477318 contesting the registration of the respondent no.1’s mark on the grounds of deceptive similarity, lack of bona fide adoption and likelihood of causing confusion among the public, to which the respondent no.1 filed its counter statement on 08.06.2020. Thereafter, the appellant filed its evidence along with supporting documents under Rule 45 of the Trade Mark Rules, 20176 on 29.06.2020 and the respondent no.1 filed its evidence under Rule 46 of the Rules on 07.09.2020. 6. Vide the impugned order, the said opposition proceedings was rejected by the respondent no.2 inter alia holding that even by stricter measures the registered trademark ‘FLORA’ of the appellant herein is visually, phonetically or structurally different from the impugned mark ‘FLORASIS’ of the respondent no.1 and the combination of mandarin characters with a unique device of ‘FLORASIS’ gives the impugned mark a unique impression, depiction and recollection in the Indian context as also that the application of the respondent no.1 is honest and bona fide as the impugned mark is already registered in various countries. As such, the impugned mark ‘FLORASIS’ was allowed to proceed for registration. 7. Aggrieved thereby, the appellant by way of the present appeal, prayed for setting aside of the impugned order. 8. The respondent no.1, despite service, has never entered appearance in the present proceedings and the respondent no.2, despite entering appearance, has not filed its reply either. As such, vide order dated 24.04.2025 passed by 6 hereinafter referred to as “the Rules” C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05 this Court, the respondent no.1 was proceeded ex-parte and its right to file a reply was also closed. SUBMISSIONS OF THE APPELLANT: 9. Mr. Hemant Daswani, learned counsel for the appellant made the following submissions:- 9.1. The impugned order suffers from manifest legal infirmities, as it overlooks the established principles of law relating to prior statutory right, likelihood of confusion and the need for exercising higher caution in trademarks/ products relating to the pharmaceutical and healthcare industry. 9.2. The appellant’s trademark ‘FLORA’ is a coined and inherently distinctive word with more than two decades of continuous and prior use in the Indian market. Moreover, the respondent no.2 has failed to appreciate that the registration application of the impugned mark ‘FLORASIS’ was filed on

21.08.2019 on a ‘proposed to be used’ basis, when clearly the appellant has been using its trademark ‘FLORA’ since 1995 and is the prior and registered proprietor since the year 2007. 9.3. The respondent no.2 has erroneously held the impugned mark ‘FLORASIS’ to be unique, distinctive and not likely to cause confusion merely because the said mark is accompanied with a mandarin character and fails to appreciate that the entire trademark ‘FLORA’ of the appellant has been incorporated in and is the dominant and distinctive component of the respondent no.1’s mark and merely addition of a suffix ‘SIS’ and a mandarin character does not materially distinguish the said impugned mark from that of the appellant. C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05

9.4. The respondent no.2 failed to consider that the impugned mark ‘FLORASIS’ by virtue of being visually, phonetically and structurally similar to the appellant’s registered trademark ‘FLORA’ is liable to refused/ rejected since it is likely to hint to the average consumer with imperfect recollection that the impugned mark is nothing but an extension of the appellant’s brand especially when the registration of the impugned mark has also been applied for under Class 5, the same Class under which the appellant holds registration thus, increasing the risk of confusion. 9.5. Although the goods of the parties are not identical, however, the products of the respondent no.1 are sold across the same counters and through the same channels of trade as that of the appellant, grant of registration by the respondent no.2 creates a likelihood of confusion between the registered trademark ‘FLORA’ and the impugned mark ‘FLORASIS’. 9.6. The respondent no.2 has failed to appreciate the established principles of law relating to medical jurisprudence wherein, the Courts have repeatedly held that a comparison of trademarks/ products involving pharmaceutical preparations needs to stricter. To substantiate his argument, he relied upon judgement passed in Cadila Health Care Limited Vs Cadila Pharmaceuticals7. 9.7. The respondent no.2 has failed to appreciate the fact that since the impugned mark ‘FLORASIS’ is not a well-known trademark within the meaning of the Act, the respondent no.1 cannot be entitled to seek benefit of usage of the same, prior to the date of application. The respondent no.1 7 (2001) 5 SCC 73 C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05 claims entitlement to a registration based on international adoption of the said word since 2017, however, merely having an international registration or usage outside India, does not confer superior rights over a party who is not only the prior adopter and a prior user but also a registered proprietor in India. 9.8. It is a settled position of law that where the ‘word’ has an independent element and distinctive role, the dominant feature of a composite mark is to be considered, especially since the customers in India relating pharmaceutical and health-related sectors, rely on the word component of the mark for identification of a particular product and often ignore stylization or foreign scripts, which they cannot read or interpret. 9.9. Foreign script, the mandarin character in the present matter, has no phonetic or visual relevance and does not create a distinguishing factor in the minds of the Indian customers, as the Indian customers are not literate in the said script. The Courts have, time and again, held that device elements or foreign character do not absolve the similarity of the ‘word’, especially, where the phonetic, visual and structural similarity thereof is high. 9.10. The mark of the respondent no.1 is liable to be refused under Section 11(1)(a) and 11(1)(b) of the TM Act as the impugned mark ‘FLORASIS’ is identical to/ deceptively similarity to an earlier registered trademark ‘FLORA’ of the appellant. C.A.(COMM.IPD-TM) 2/2024 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:14.05.2025 18:02:05

9.11. In support of the aforesaid contentions, reliance upon Mankind Pharma Limited vs. Pharmaxia Health Care8; Subhash Chand Bansal vs. Khadim’s & Anr.9; Indchemie Health Specialities Pvt. Ltd., Mumbai vs. Naxpar Labs Pvt. Ltd. & Ors.10; Bata India Limited vs. Chawla Boot House & Anr.11; Toyota Jidosha Kabushiki Kaisha vs. M/s. Prius Auto Industries Limited12; Cadila Healthcare Limited vs. Cadila Pharmaceuticals Ltd.13; Milmet Oftho Industries & Ors. vs. Allegran Inc.14 and Novartis AG vs. Crest Pharma Pvt. Ltd.15 was placed. ANALYSIS & FINDINGS: 10. This Court has heard the learned counsel for the appellant and has also gone through the documents on record, along with the relevant judgments on the issues cited therewith. 11. As is borne out from the records, none of the respondents, particularly the respondent no.1, despite being duly served, have filed any response to the contentions raised by the appellant in the present appeal, as such, there being no specific or even general denial of any of the pleadings made by the appellant, therefore, under such circumstances, all the aforesaid averments made therein, without any response/ denials thereto, are deemed to be admitted and true.