Traditionally, the statutory defence of 'concurrent
use', in suits relating to infringement of trademarks, has been
carried too far because of its banal use. The case of Alkem
Laboratories Ltd. v. Mega International Ltd., 2009 (41) PTC 302
(Del.) (DB) delves on the issue of the plea of 'concurrent
use' and its presentation in which the Court would accept the
Alkem Lab. Ltd., engaged in the business of pharmaceuticals,
adopted the trademark 'GEMCAL' in August 1999 and in April
.2000, applied for its registration. However, the use of the
trademark only commenced in the month of July, 2000. They claim
that in 2003, they came across the same mark being used by the Mega
International Pvt. Ltd. and in that pursuance filed a suit for
permanent injunction alleging infringement of trademark and passing
off of goods .
Alkem argued that Mega International was a subsequent user of
the trademark since Alkem had commenced business and usage of the
mark well before them.. The use of the trademark 'GEMCAL'
by Mega was alleged to be causing confusion in the minds of
consumers and the same was alleged to be done to deceive purchasers
through the use of an identical mark. Mega International in reply,
claimed a lawful or legal ownership/ proprietorship of the said
trademark. They claimed that it had been using the mark since
November, 2000 and had applied for registration in the year 2003.
They thus claimed to be a 'prior' user instead of being a
'subsequent' user as alleged.
The first issue, which the learned Single Judge decided upon,
after an extensive perusal of the above facts, was of
'proprietorship', both parties having claimed a valid
proprietorship of the trademark 'GEMCAL' in respect of
pharmaceuticals and medicinal preparations. However, the burden of
proof to prove a legal proprietorship, by showcasing necessary and
sufficient evidence, was said to rest on Alkem. The Court adjudged
that Alkem had failed to prove, by way of reasonable and necessary
evidence that he was the valid proprietor of the impugned
Alkem also urged that even if they could not prove that the
proprietorship laid with them, still on account of the previous and
first user of the trademark GEMCAL, mega would be guilty of
'passing off' and hence pleaded injunction against them.
The question before the Court was to deliberate whether there was a
case of 'passing off' as alleged or if Mega International
was in fact a 'concurrent' user of the impugned mark.
Evidence of Alkem's having filed an application for the mark
'GEMCAL' in the month of April 2000 and selling the
products in question bearing the said mark from the end of July
2000 was brought forth. As against this, Mega International claimed
that they had started the manufacturing and sale of the product in
November 2000. Further, Alkem raised a contention that mega
International had not taken the plea of 'concurrent' user
in the pleading and therefore, the same could not have been decided
by the Court in favour of the respondent.
While dismissing the above contention, the Court ruled that,
" if a plea has not been specifically taken in the written
statement by a party, but the reading of the whole of the written
statement would make it amply clear that such a plea is reflected
not only in our pleadings but also from the evidence adduced by the
said party, then the Court, instead of ousting the respondent on
this technicality ought to consider the substance of the pleading
rather than the form."
In pursuance of the above adjudication, the Court dismissed the
appeal of Alkem Laboratories Ltd. as not having any merit. The
Court rendering this seems to have advocated that a harmonious
reading of all pleadings and evidence must be made, in order to
admit and decide upon contentions made in suits.
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