The Trade Marks Act, 1999

IN THE MATTER OF APPLICATION No. 669331 in Class 5 in the

name of M/s. Biological E. Limited, Das
Chambers 25,Dalal Street, Mumbai- 400
023

AND

IN THE MATTER OF OPPOSITION No.

MAS – 710033 by Lupin Limited, 159,
CST Road, Kalina, Santacruz (East),
Mumbai- 400 098, Maharashtra, India
 AFFIDAVIT IN SUPPORT OF OPPOSITION

I, R. Kumar, an adult Indian national, residing at 3, Mithila Society, Cama

Lane, Ghatkopar (West), Mumbai – 400 086, Maharashtra, India, Senior

Manager- Legal of the Opponent Company above named, do hereby

solemnly affirm and state as follows:-

1. I am the Deputy General Manager (Legal) of Lupin Limited, a Company

Incorporated under the Companies Act, 1956 (hereinafter referred to as “my

company” which term and expression shall be deemed to mean and include

the predecessors-in-title, business and interest, affiliates, group companies

and successors wherever the context so requires), having its office at 159,

CST Road, Kalina, Santacruz (East), Mumbai – 400 098 in the State of

Maharashtra, within the Union of India, the Opponents in the above matter. I

am fully conversant with the business activities of my company and by virtue

of my above position; I have full access to the business records of my

company. I am competent and authorized to execute this affidavit on behalf of

the Opponents. I have made myself acquainted with the facts relating to the

Opposition No. MAS- 710033 filed by my company against Application No.

669331 in Class 5 in the name of M/s. Biological E. Ltd.

2. I have read the relative Notice of Opposition dated 24th August, 2007 filed by

my company and hereby reiterate, confirm and adopt as my own the

statements made therein. I have also read the copy of the Counter Statement

dated 2nd September, 2008 filed by the Applicants in reply to the said Notice of

Opposition. I hereby deny, except as specifically admitted by me herein

below, all the statements, allegations, contentions and averments made in

the said Counter Statement that are contrary to or inconsistent with what is

stated in my company’s Notice of Opposition referred to above. Without

prejudice to the generality of the above denial, I state as follows:-

3. My company has been carrying on a leading and well-established

business as manufacturers, marketers and dealers in ayurvedic,

medicinal and pharmaceutical preparations and substances, bulk

drugs, etc. for past several decades, which are sold extensively under

several trade marks and brand names. My company is the proprietor of

the registered trade marks CEFOXANE and CEFAXONE and the trade

marks inter alia containing the word CEFF as an essential feature

thereof i.e. CEFF, CEFF-IM, CEFF-SUSPENSION, CEFF-250, CEFF-

500, CEFFCARB-CF, CEFF ER and CEF-4 etc. Annexed hereto and

marked as Exhibit ‘A’ are copies of registration and renewal

certificates of the said registrations. The said trade marks were

originally adopted by M/s. Lupin Laboratories Limited then known as

M/s. Lupin laboratories Private Limited. The said Lupin Laboratories

Limited along with all its assets and liabilities merged with Lupin

Chemicals Limited in pursuance of the Hon’ble Court’s Order

sanctioning a Scheme of Amalgamation dated 26th June, 2001 and

later changed its name to Lupin Limited. Thus, the entire assets and

liabilities of the said Lupin Laboratories Limited came to be vested with

my company. Hereto annexed and marked as Exhibit ’B’ is a copy of

the said order and Exhibit ‘B-1’ is a copy of the Certificate issued by

the Registrar of Companies certifying the change of Lupin Chemicals

Limited to Lupin Limied.

4. The said trade marks inter alia containing word CEFF & the mark

CEFAXONE have been used in relation to my company’s products on

a growing and an extensive scale since the commencement of the use

thereof in respect of medicinal and pharmaceutical preparations and

the same have gone on to acquire an enviable reputation and goodwill

inter alia due to the intrinsic quality of the goods sold there under.

Presently, my company is manufacturing and/or marketing more than

ten medicinal preparations under the trademarks inter alia containing

word CEFF as an essential feature thereof. The said products are

widely sold all over the country and have come to be exclusively

associated with my company and none else. Owing to the excellence in

quality and reliability of the medicinal and pharmaceutical products sold

under the said mark CEFAXONE and the CEFF family of marks, the

said trade marks have gained wide acceptance among the medical

practitioners and the public and sales thereof have been on a large and

growing scale throughout India. My company has also carried out

variety of sales promotional efforts and publicity through

advertisements in medical journals, issue of promotional literature,

distribution of samples amongst medical practitioners, etc., to

popularize and promote the sale of the products bearing the above

trade marks. As a result of the large sales of the goods and the

promotional efforts and publicity mentioned above, the said trade

marks have become distinctive of the products of my Company’s

manufacture. It is respectfully submitted that my Company’s marks are

well-known marks and hence, are entitled to protection under various

 provisions of the Trade Marks Act, 1999. I attach herewith and mark

as Exhibit ‘C’ a duly certified Statement of Annual Sales turnover and

annual expenditure incurred by my company on advertising and sales

promotional activities of the products bearing the trade mark CEFF.

Further, I annex hereto and collectively mark as Exhibit ‘D’ random

copies of invoices and bills showing the sale of the medicinal

preparations bearing the trade mark CEFAXONE and CEFF family of

marks. I also annex herewith and mark as Exhibit ‘E’, copies of some

of the sales promotional and advertisement material of the medicinal

preparations bearing the trade mark CEFAXONE and CEFF family of

marks. I crave leave to refer to and rely upon additional documents as

and when produced.

5. The Applicants are seeking registration of the mark CEFOXIME

(hereinafter referred to as ‘the impugned mark’) in respect of

pharmaceutical and medicinal preparations (hereinafter referred to as

‘the impugned goods’) which mark is phonetically, visually, structurally,

deceptively and/or confusingly similar to the aforesaid registered trade

marks CEFF, CEFAXONE and CEFOXANE of my company. It is

submitted that there exists a high degree of similarity between the

Applicants’ mark and my company’s said trade marks. In addition to

this, the goods in respect of which the subject application is made are

also same or similar as the goods of the manufacture and merchandise

of my company. Thus, the use of the impugned mark by the Applicants

is likely to cause confusion and deception among the members of the

trade and public, who are likely to assume that the products of the
 Applicants bearing the impugned mark are products of my company or

the impugned goods are in some way connected with my company

thereby enabling the Applicants and other unscrupulous traders to pass

off their goods as and for those of my company.

6. I submit that the registration, if granted, to the impugned mark will

interfere with and prejudicially affect my company’s commercial interest

and would dilute the distinctive character acquired by my company’s

aforesaid trade marks and would also be contrary to the interest of the

public who associate and identify the said trade marks with my

company. I therefore, respectfully submit that the Registrar be pleased

to prevent the impugned phonetically, visually and structurally,

confusingly and/or deceptively similar mark from being registered in

respect of the same and/or similar goods as those of my company.

7. I now refer to and deal with the Counterstatement dated 2nd September,

2008 filed by the Applicants. I deny in seriatim the allegations,

contentions, statements and claims of the Applicants made in the

Counter Statement, except which are specifically admitted herein

below. Without prejudice, I now deal paragraph wise with the

Counterstatement filed by the Applicants as follows:-

(a). With reference to paragraph no. 1 of the said counterstatement,

I am not aware and do not admit that the Applicants are engaged

in the business of manufacturing, marketing, distributing and/or

selling pharmaceutical or medicinal preparations for the past

several decades as alleged. It is denied that the Applicants have

 adopted or used many trade marks several of which are registered

or pending registration as alleged or otherwise. In any event, the

same is not relevant to the context of the present proceeding.

(b). With reference to paragraph no. 2 of the said counterstatement,

I am not aware and do not admit that the Applicants in the year

1993 decided to introduce a new product of the said goods or

honestly coined the impugned mark CEFOXIME for their goods as

alleged. The Applicants are put to strict proof thereof. It is denied

that the Applicants’ decision of adopting the impugned mark was

influenced by the fact that the impugned mark was able to

distinguish the impugned goods of the Applicants from the goods

of others having same or similar description as alleged. Further it

is denied that the Applicants adopted the impugned mark for the

impugned goods or have used the same in the course of bonafide

trade as alleged. It is submitted that my company’s registered

trade mark CEFAXONE have been used openly, continuously and

extensively since the year 1989 throughout India and is extremely

popular amongst relevant trade channels, medical practitioners

and public. The Applicants have clearly with a malafide intention to

trade upon the reputation and goodwill subsisting in my company’s

aforesaid marks, copied my company’s trade marks. It is pertinent

to mention that my company is the prior adopter and user of the

said trade mark CEFAXONE whereas the Applicants are

subsequent in adoption and use of the impugned mark which is a

clear manifestation of their dishonest and malafide adoption.

(c). With reference to paragraph no. 3 of the said counterstatement,

I am not aware and do not admit that pursuant to the commencing

the use of the impugned mark for the impugned goods the same

were well responded to by the members of the medical trade or

fraternity or the Applicants after 2 years of use of the impugned

mark applied for the registration for the impugned goods with the

office of the Registrar of Trade Marks as alleged or otherwise. I

accept only what is a matter of record at the Trade Marks Registry

and nothing beyond the same.

(d). With reference to paragraph no. 4 of the said counterstatement,

I accept only that which is a matter of record at the Trade Marks

Registry and nothing beyond the same.

(e). With reference to paragraph no. 5 of the said counterstatement,

I deny the contents thereof. It is denied that on account of non

existence of any conflicting marks or alleged honesty in adoption

of the impugned mark or alleged long or continuous use of the

impugned mark, the Applicants convinced the Learned Registrar

to cause to publish the impugned mark in the Trade Marks

Journal, as alleged. Further I do not admit that the examination

report of the office of the Registrar of Trade Marks does not list all

or any of the marks on which my company relies upon for the

present proceedings as alleged or otherwise. The Applicants are

put to strict proof thereof. In any event, I say and submit that non

citation of my company’s conflicting marks in the examination

report does not preclude my company’s right to oppose this

 present application for registration under the Trade Marks Act,

1999.

(f). With reference to paragraph no. 6 of the said counterstatement,

the contents thereof are denied in seriatim. I emphatically deny

that my company’s opposition is totally baseless, wrong or untrue

as alleged. I repudiate the denials made in the paragraph under

reply and reiterate and reaffirm what is stated in the Notice of

Opposition filed by my Company. Further it is stated relevant

documentary evidence is adduced hereinabove to substantiate the

claims made by my Company in the Notice of Opposition.

(g). With reference to paragraph no. 7 of the said counterstatement,

I reiterate, repeat and reaffirm what is mentioned in the

corresponding paragraph 1 of the notice of opposition filed by my

company.

(h). With reference to paragraph no.8 of the said counterstatement, I

repudiate the denials made therein and reiterate, repeat and

reaffirm what is stated in the corresponding paragraph 2 of the

notice of opposition filed by my company. It is submitted that I

have adduced relevant documentary evidence hereinabove to

support the averments made in the notice of opposition filed by my

company.

(i). With reference to paragraph no. 9 of the said counterstatement, I

repudiate the denials made therein and reiterate and repeat what
 is stated in the corresponding paragraph nos. 3&4 of the notice of

opposition filed by my company.

(j). With reference to paragraph no. 10 of the said counterstatement, I

repudiate the denials made therein and reiterate, repeat and

reaffirm what is stated in the corresponding paragraph 5 of the

notice of opposition filed by my company. It is submitted that I

have adduced sufficient documentary evidence hereinabove to

corroborate the averments made in the notice of opposition filed

by my company.

(k). With reference to paragraph no. 11 of the said

counterstatement, I deny the contents in seriatim and reiterate,

repeat and reaffirm what is stated in paragraph no. 6 of the notice

of opposition filed by my company. It is denied that the impugned

mark of the Applicants is not phonetically, structurally, visually

deceptively similar to all or any trade marks on which my company

rely in the present proceedings or there is no cause of concern

that any person including the one possessing imperfect

recollection would mistake one for another as alleged. Further it is

vehemently denied that the similarity between the two trade marks

of my company would cause such an incident. I deny that on

account of the alleged differences between the rival marks it is not

possible for any one to assume that the impugned goods of the

Applicants bearing the impugned mark are the goods of my

company or associated with my company in any manner as

alleged or otherwise. It is denied that the registration would not be

 a violation of provision of section 9 (2) (a) of the Act as alleged. I

reiterate that the impugned mark is visually, phonetically and

structurally confusingly and deceptively similar to my company’s

earlier and well-known CEFF family of trade marks and more

particularly CEFAXONE. I further state that the goods in respect of

which the subject application is made are same or goods of similar

description and nature and the same are likely to pass through the

same trade channels. It is a well known fact that the whole task of

dispensing the said goods is not necessarily conducted by

professional and qualified medical practitioners and they are also

assisted by unqualified people at various stages from

manufacturing to selling to ultimate consumption. Hence the use

and/or registration of the impugned similar mark is likely to deceive

and/or cause confusion, which includes confusion as to trade

source. Further, since the goods involved are medicines any

likelihood of confusion should be precluded and the registration of

the impugned deceptively similar ought to be refused under the

provisions of Section 9(2) (a) of the Act.

(l). With reference to paragraph nos. 12 & 13 of the said

counterstatement, I repudiate the denials made therein and

reiterate, repeat and reaffirm what is stated in the corresponding

paragraphs 7 and 8 of the notice of opposition filed by my

company. I vehemently deny that the lack of similarity between

the rival marks would not aid or cause confusion whereby the

impugned goods of the Applicants under the impugned mark can

 be anyway considered to be that of my company,, as alleged or

otherwise. It is strongly denied the registration of the impugned

mark cannot be refused under the provisions of section 11(1) of

the Act as alleged or otherwise. In view of the fact that my

company’s mark CEFAXONE have been openly, extensively and

continuously used since 1989 and have become distinctive and

well known among the trade who associate the said mark with my

company’s manufacture and merchandise only, the use of the

structurally, visually and deceptively and/or phonetically similar

mark by the Applicants will be detrimental to the distinctive

character and repute of my company’s said mark CEFAXONE

and CEFF family of marks. Further I submit that my company is

the prior adopter; user and proprietor of the registered trade mark

CEFAXONE and CEFF family of marks. In view of this the

registration of the impugned mark will inevitably put at risk the

distinctiveness of my company’s well-known trade marks and its

variations which have been openly, extensively and continuously

used from the year 1989.

(m). With reference to paragraph no. 14 of the said

counterstatement, I repudiate the denials made therein and

reiterate, repeat and reaffirm what is stated in the corresponding

paragraph 9 of the notice of opposition filed by my company. It is

vehemently denied that on account of the alleged use of the

impugned mark the same has acquired any distinct character, as

alleged or otherwise. The Applicants are put to strict proof thereof.

 I reiterate that the trade mark applied by the Applicant is not a

distinctive trade mark on account of my company’s prior and

earlier registered trade marks and the same is not adapted to

distinguish the Applicant’s goods in the course of trade. Further

the same is not capable of distinguishing the Applicant’s goods

from that of my company’s goods and the same is devoid of any

distinctive character.. Therefore the registration of the impugned

mark of the Applicants is barred within the meaning, scope and

provision of section 9(1) (a) of the Act.

(n). With reference to paragraph no. 15 of the said

counterstatement, I repudiate the denials made therein and

reiterate, repeat and reaffirm what is stated in paragraph no. 10 of

the notice of opposition filed by my company. I reiterate owing to

the deceptive and confusing similarity of the rival marks and

goods, there is great likelihood of confusion and deception being

caused and the Applicants’ goods under the impugned mark are

likely to be passed off as and for that of my company. Further use

of the impugned mark also amounts to infringement of my

company’s registered trade marks. Thus, the Applicant’s mark is

not entitled to protection in a court of law and its registration is

prohibited within the meaning and scope of the provisions

contained in section 11 (3) (a) and section 29 of the Act.

(o). With reference to paragraph no. 16 of the said

counterstatement, I repudiate the denials made therein and

reiterate, repeat and reaffirm what is stated in the corresponding

 paragraph 11 of the notice of opposition filed by my company. It is

vehemently denied that the Applicants have honestly coined,

adopted or used the said mark or are the proprietors of the

impugned mark within the meaning of the section 18(1) of the act

as alleged or otherwise. At the risk of being repetitive, it is

submitted that, my Company’s mark CEFAXONE has been in use

since the year 1989 and the same has become well known

amongst the members of public, trade and medical profession.

The Applicant has no justification to adopt the impugned

deceptively and/or confusingly mark much subsequently and the

same has been done merely with a malafide intention to trade

upon the enormous reputation acquired by my Company in the

marks CEFAXONE. Therefore in view of the dishonest intention of

the Applicant in adopting the subsequent deceptively similar mark

CEFOXIME, they do not qualify as legitimate or lawful proprietors

of the impugned mark under Section 18 (1) of the Act.

(p). With reference to paragraphs no.17 & 18 of the said

counterstatement, I deny the contents in seriatim. I repudiate the

denials made therein and reiterate, repeat and reaffirm what is

stated in the corresponding paragraph 13 of the notice of

opposition filed by my company. It is vehemently denied that the

provisions of section 12 of the Act are in favour of the Applicants

as the impugned mark has been honestly adopted or used by the

Applicants or they are entitled to the benefit of the section 12 of

the Act as alleged or otherwise. Further I emphatically deny that

 the registration of the impugned mark would not be contrary to the

provisions of section 9, 11, 12 or 18 of the Act as alleged.

(q). With reference to paragraph no. 19 of the said

counterstatement, I repudiate the denials made therein and

reiterate, repeat and reaffirm what is stated in paragraph 14 of the

notice of opposition filed by my company. It is denied that the

impugned mark is distinct or different from the various trade marks

of my company. Further I deny that my company in order to

prevent fair play in the market are delaying the registration of the

impugned mark in favour of the Applicants to achieve their goal as

alleged. It is reiterated the Applicant has adopted the impugned

deceptively and/or confusingly similar mark CEFOXIME in bad

faith to trade upon the reputation and goodwill subsisting in the

earlier registered and well known mark CEFOXONE of my

Company. Further my company has successfully established all

the grounds for refusal of registration of the impugned deceptively

similar mark. The Applicant was bound to have knowledge of the

existence of the earlier well known and long used marks of my

Company which have been extensively, openly and continuously

used since the year 1989. Further my company has filed the

present opposition merely to safeguard their valuable rights in the

said trade mark and not for any of the reasons alleged in the

paragraph under reply.

(r). With reference to paragraph no. 20 & 21 of the said

counterstatement, I repudiate the denials made therein and

 reiterate and repeat what is stated in the corresponding

paragraphs of the notice of oppositions filed by my company. It is

emphatically denied that the Learned Registrar uses his discretion

in favour of the Applicants on account of honest adoption use of

the impugned mark which is capable or able to distinguish the

impugned goods to which the same is applied as alleged. It is

submitted that the Applicant has miserably failed to justify the

adoption of the impugned subsequent deceptively and/or

confusingly similar mark. Therefore, the Hon’ble Registrar ought to

exercise his judicial discretion in favour of my company by

allowing the present opposition and dismissing the impugned

application.

(s).With reference to paragraph no.22 of the said counterstatement it

is denied that the impugned application is a fit case for registration

or in the circumstances my company pray that the impugned mark

under the impugned application no. 669331 be rejected, the notice

of opposition therein be allowed and the costs of there

proceedings be awarded to my company.

8. In the premises, I respectfully submit that the Applicants have

failed to discharge the onus on them of proving that their impugned

trade mark is not open to objections contained in the notice of

opposition and is entitled to registration. I therefore pray that that the

Registrar be pleased to allow this Opposition with costs and to refuse

the application.
 Solemnly affirmed at Mumbai)

Dated this day of July, 2010) DEPONENT

VERIFICATION

I R. Kumar, Senior Manager, Legal of the Opponents do hereby verify

that the contents of Paragraph nos. 1 to6 of my affidavit are true to the

best of my information and knowledge based on the records of my

company, maintained in the ordinary course of business and nothing

material or relevant has been concealed there from and what is stated in

paragraph nos. 7(a) to 7(s) are the legal submissions and what is stated

in paragraph no. 8 is in the nature of a prayers to this Hon’ble Tribunal.

The Exhibits attached hereto are what they purport to be.

Declared and verified at Mumbai)

Dated this day of July, 2010) DEPONENT