(1)
JAGDISH LAL GAMBHIR Vs.
PUNJAB NATIONAL BANK AND OTHERS .....Respondent D.D
06/10/2015
(2)
PURNIMA MANTHENA AND OTHERS Vs.
Not Found D.D
06/10/2015
(3)
RAMESH CHAND (DEAD) THROUGH L.RS. Vs.
ASRUDDIN (DEAD) THROUGH LRS AND ANOTHER .....Respondent D.D
06/10/2015
(4)
SATYA PAL SINGH Vs.
STATE OF M.P. AND OTHERS .....Respondent D.D
06/10/2015
(5)
STATE THROUGH INTELLIGENCE OFFICER NARCOTICS CONTROL BUREAU Vs.
MUSHTAQ AHMAD ETC. .....Respondent D.D
06/10/2015
(6)
NEON LABORATORIES LTD. Vs.
MEDICAL TECHNOLOGIES LTD. AND OTHERS .....Respondent
Sections, Acts, Rules, and Article mentioned:
Section 34,47: Trade Marks Act, 1999
Code of Civil Procedure
Subject:
Trademark dispute involving Neon Laboratories Ltd. (Appellant) and Medical Technologies Ltd. (Respondent) over the trademarks "ROFOL" and "PROFOL."
Headnotes:
Facts:
The plaintiff-respondents, engaged in the pharmaceutical business, alleged that the defendant-appellant's use of the trademark "ROFOL" was deceptively similar to their trademark "PROFOL." They filed a suit seeking injunction, damages, and an account of profits.
Issues:
Whether the plaintiff-respondents established a prima facie case in their favor.
Whether the balance of convenience and potential irreparable loss favored the plaintiff-respondents.
Interpretation of Sections 34 and 47 of the Trade Marks Act, 1999.
Applicability of prior user rights in trademark disputes.
Held:
The plaintiff-respondents had established a prima facie case in their favor based on prior user rights and the similarity between the trademarks.
The balance of convenience and potential irreparable loss favored the plaintiff-respondents due to the potential loss of goodwill and business.
Sections 34 and 47 of the Trade Marks Act, 1999, protect the rights of prior users of trademarks, emphasizing the importance of prior user rights in trademark disputes.
The court dismissed the appeal, affirming the trial court's decision to grant an injunction in favor of the plaintiff-respondents. The decision was reasonable and judicious, considering the facts and legal principles involved in the case.
Referred Cases:
N.R. Dongre and Others Vs. Whirlpool Corpn. and Another, (1996) 6 AD 710 : (1996) 2 ARBLR 488 : (1996) 7 JT 555 : (1996) 16 PTC 583 : (1996) 6 SCALE 276 : (1996) 5 SCC 714 : (1996) 5 SCR 369 Supp
Wander Ltd. and Another Vs. Antox India P. Ltd., (1990) 2 ARBLR 399 : (1990) 1 SCC 727 Supp : (1990) SCC 727 Supp
Milmet Oftho Industries and Others Vs. Allergan Inc., (2004) 121 CompCas 486 : (2004) 170 ELT 260 : (2004) 28 PTC 585 : (2004) 5 SCALE 772 : (2004) 12 SCC 624 : (2004) 2 SCR 586 Supp
S. Syed Mohideen Vs. P. Sulochana Bai(2015) 2 RCR(Civil) 810 : (2015) 7 SCALE 136
JUDGMENT
Vikramajit Sen, J—This Appeal assails the judgment dated 19.12.2005 of the Learned Single Judge of the High Court of Gujarat at Ahmedabad, who returned the opinion that the Trial Court had rightly granted an injunction in favour of the Plaintiffs (Respondents before us) till the disposal of the suit.
2. Briefly stated, the Plaintiff-Respondents 1 & 2 had filed a suit for injunction, damages and account of profits. The Plaintiff-Respondents are engaged in the business of manufacture and marketing of pharmaceutical products and medicinal preparation, and as pleaded by them, have acquired high reputation and goodwill in the market. Hematal Biologicals Ltd. or Core Health Care Ltd., the predecessor-in-title of Plaintiff-Respondents is stated to have introduced the molecular preparation and generic drug "Propofol" in India, in respect of which an application had been filed before the Drug Controller of India on 22.4.1998. Product Permission was received on 2.5.1998 from the Commissioner of Food and Drugs Control Administration. It has been pleaded that the predecessor-in-title of Plaintiff-Respondent No. 1 had coined and invented the trademark PROFOL in April 1998 and not applied for registration of the said trademark on 24.5.1998 in Class V. However, it seems to us that this claim may not find acceptance inasmuch as PROFOL is almost an anagram of and is phonetically almost indistinguishable from the molecular compound, namely "Propofol". In our opinion, to claim exclusivity of user, the trademark should normally partake of a new creation, or if an existing word, it should not bear descriptive characteristics so far as the product is concerned, nor should it be of an extolment or laudation. It would be surprising if exclusivity is given to marks such as 'bestsoap' etc. Having said this, we must accept the reality that in the pharmaceutical industry it is commonplace that trademarks reproduce and resonate the constituent composition. While this aspect and feature may be a good ground for declining registration of the trademark, it may nevertheless remain a favourable determinant in a passing- off action. So far as the subject trademarks are concerned, not only do their names constitute part of the generic drug "Propofol", but they are also so similar that even the concerned medical practitioner/anesthesiologist could fail to discern the difference between them. It has been pleaded in the plaint that the said predecessor-in-title has been openly employing this mark since April 1998. After amalgamating with its predecessor-in-title on 17.2.2000, Plaintiff-Respondent No. 1 became the owner of the trademark PROFOL, and has been using it since 2000, when it also applied for its registration. Plaintiff-Respondent No. 2 is a licensee of Plaintiff-Respondent No. 1. On coming to learn that Defendant No. 1, the Appellant before us, had introduced into market the same generic drug under the trademark ROFOL, the Plaintiff-Respondents filed the present suit on 17.7.2005, on the predication that ROFOL is identical and deceptively similar to the Plaintiff-Respondents' trademark PROFOL. As is to be expected, the assertion in the plaint is that the Defendant-Appellant is marketing and passing off its products as that of the Plaintiff-Respondents.
3. This Court does not normally entertain appeals against interlocutory orders. In the case of trademarks, however, keeping in perspective the endemic delay in concluding cases/suits in India because of the exponentially increasing docket explosion, temporary ad interim injunctions are of far reaching consequences, oftentimes effectively deciding the lis and the disputes themselves. Possibly for this reason 'Leave' has already been granted in the present Appeal. However, it is now well entrenched in our jurisprudence that the Appellate Court should not flimsily, whimsically or lightly interfere in the exercise of discretion by a subordinate court unless such exercise is palpably perverse. Perversity can pertain to the understanding of law or the appreciation of pleadings or evidence. We shall restrict ourselves to reference in Wander Ltd. and Another Vs. Antox India P. Ltd., , wherein it has been adumbrated that the Appellate Court ought not to "reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion". We shall be careful not to transgress these frontiers.
4. Before granting an ad interim injunction, the Court in seisin of the litigation has to address its attention to the existence or otherwise of three aspects-(a) whether a prima facie case in favour of the applicant has been established; (b) whether the balance of convenience lies in favour of the applicant; and (c) whether irreparable loss or damage will visit the applicant in the event injunctory relief is declined. We shall cogitate on the first factor first-is the law favourable to the applicant.
5. The primary argument of the Defendant-Appellant is that it had received registration for its trademark ROFOL in Class V. on 14.9.2001 relating back to the date of its application viz. 19.10.1992. It contends that the circumstances as on the date of its application are relevant, and on that date, the Plaintiff-Respondents were not entities on the market. However, the Defendant-Appellant has conceded that it commenced user of the trademark ROFOL only from 16.10.2004 onwards. Furthermore, it is important to note that litigation was initiated by Plaintiff-Respondents, not Defendant-Appellant, even though the latter could have raised issue to Plaintiff-Respondents using a similar mark to the one for which it had filed an application for registration as early as in 1992. The Defendant-Appellant finally filed a Notice of Motion in the Bombay High Court as late as 14.12.2005, in which it was successful in being granted an injunction as recently as on 31.3.2012. We may reiterate that every High Court must give due deference to the enunciation of law made by another High Court even though it is free to charter a divergent direction. However, this elasticity in consideration is not available where the litigants are the same, since Sections 10 and 11 of the Code of Civil Procedure would come into play. Unless restraint is displayed, judicial bedlam and curial consternation would inexorably erupt since an unsuccessful litigant in one State would rush to another State in the endeavour to obtain an inconsistent or contradictory order. Anarchy would be loosed on the Indian Court system. Since the Division Bench of the Bombay High Court is in seisin of the dispute, we refrain from saying anything more. The Plaintiff-Respondents filed an appeal against the Order dated 31.3.2012 and the Division Bench has, by its Order dated 30.4.2012, stayed its operation.
6. It may be reiterated that the Plaintiff-Respondents asserts that their predecessor-in-interest had initiated user of the trademark PROFOL in 1998, when it commenced production thereof and Plaintiff-Respondents succeeded to the user of the mark upon amalgamation with their predecessor-in-title in the year 2000. The position that emerges is that whilst the Defendant-Appellant had applied for registration of its trademark several years prior to the Plaintiff-Respondents, (1992 as against 26.5.1998 at the earliest), the user thereof had remained dormant for twelve years. We can appreciate that this passivity may be the result of research of the product or the market, but the Defendant-Appellant will have to explain its supineness through evidence. In this interregnum, the Plaintiff-Respondents had not only applied for registration but had also commenced production and marketing of the similar drug and had allegedly built up a substantial goodwill in the market for PROFOL. The legal nodus is whether the prior registration would have the effect of obliterating the significance of the goodwill that had meanwhile been established by the Plaintiff-Respondents. Would a deeming provision i.e. relating registration retrospectively prevail on actuality-competing equities oscillate around prior registration and prior user.
7. Section 34 of the Trade Marks Act, 1999 (the Act) deserves reproduction herein:
34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior-
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;
whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.
This Section palpably holds that a proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This "first user" rule is a seminal part of the Act. While the case of the Plaintiff-Respondents is furthered by the fact that their user commenced prior to that of the Defendant-Appellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the Defendant-Appellant filed for registration in 1992, six years prior to the commencement of user by the Plaintiff-Respondents. The Defendant-Appellant was, thus, not prevented from restraining the Plaintiff-Respondents' use of the similar mark PROFOL, but the intention of the D.D
05/10/2015
(7)
PUKHREM SHARATCHANDRA SINGH Vs.
MAIREMBAM PRITHVIRAJ .....Respondent D.D
01/10/2015
(8)
STATE BANK OF HYDERABAD Vs.
RABO BANK .....Respondent D.D
01/10/2015
(9)
SUDHIR AND OTHERS Vs.
THE STATE OF MAHARASHTRA AND OTHERS .....Respondent D.D
01/10/2015