India: Mere Registration, Without Intention To Use The Mark, Does Not Give Exclusivity To The Mark.

Last Updated: 2 June 2011
Article by Sonam Lhamu Bhutia and Vasundhara Kamath S

In Unichem Lab v Ipca Lab, the Plaintiffs, Unichem Laboratories Ltd, a Company incorporated under the Companies Act, 1956, and carrying on business in pharmaceutical preparations, approached the Court with a plea that the Trade Mark of Ipca Lab (the Defendant) was deceptively similar to their own mark 'LORAM'. Ipca Lab, carrying on businesses of manufacturing and distributing pharmaceutical preparations respectively, had been using the mark 'SELORAM'. The Plaintiff sought for a permanent injunction restraining the Defendant from manufacturing and using the said mark.

It was prima facie made clear that since neither the Plaintiffs nor the Defendants were registered proprietors of the respective marks, the claim as made was only in relation to passing off.

The Plaintiff claimed that they had conceived, coined and adopted the Trade Mark 'LORAM' for use in respect of their pharmaceutical preparations and the same was being sold in the market for a long time and had consequently acquired good reputation. By manufacturing and distributing products with a mark similar to that of the Plaintiff, the Defendants were passing off their products as those of the Plaintiffs.

The Plaintiff brought to the attention of the Court that in June 2010 they came across the Defendant's product with the impugned mark 'SELORAM' which, according to them, resembled their own mark structurally and phonetically. Minor changes made by the Defendants were insignificant in their opinion, as it would be impossible for the common man to distinguish between the two, despite the changes made. This act of the Defendants, the Plaintiffs claimed, was having an adverse impact on their reputation and goodwill and it also amounted to cheating the gullible customers and putting their lives in danger. This was because the composition of the two medical products was different and also that the two were used for entirely different medical conditions. The Plaintiff contended that they were entitled to get an interim injunction since otherwise tremendous hardship would be caused not only to them, but also to the public at large.

The Defendants, on the other hand maintained that the claim was frivolous, vexatious and was an abuse of the process of law. They based their claim on the marks of four other pharmaceutical companies that were similar to that of the Plaintiff. Moreover, M/s. Haryana Formulations Pvt. Ltd. was the proprietor of an identical mark since 1999 and as a result, the Plaintiff could not claim exclusivity with regard to their mark.

The Defendants also brought to the attention of the Court that contrary to the Plaintiff's contentions they had been selling their products in the market much before 2010. In fact, in a conference organized by the Research Society for the study of Diabetes in India, the representatives of both the Plaintiff and the Defendant had stalls next to each other.

It was also highlighted that the mark 'SELORAM' was extracted from 'SELOKEN' and 'RAMACE', both of which could be traced to companies which have been in the pharmaceutical business for decades together. Further, since numerous applications and registrations for the mark 'LORAM' or other formative marks had been filed in the name of different entities, it could be considered as publici juris or generic and thus, no exclusivity could be claimed in respect of the same.

In their Rejoinder the Plaintiffs responded with the assertion that since they were prior users of the mark 'LORAM' the injunction could not be denied on the ground that the Plaintiffs were trading upon somebody else's reputation or that the claim was lacking in bona fides. In order to substantiate their claim, they relied on Cadila Health Care Ltd v. Cadila Pharmaceuticals [AIR 2001 SC 1952] wherein the Apex Court had laid down that the possibility of confusion, rather than the probability, was the test to be followed. Hence, injunction, which was a discretionary relief, could not be denied to the Plaintiffs on the ground that they had fraudulently and dishonestly adopted or copied the mark 'LORAM' from the rightful proprietors. Finally, the Plaintiffs asserted that any conclusion with regard to infringement by the Plaintiffs could not be drawn at such an early stage.

The Defendants further claimed that the Plaintiffs had not approached the Court with clean hands. This was because they had kept the Court in the dark with regard to Opposition proceedings against their mark initiated by M/s. Haryana Formulations Pvt Ltd, wherein they had contended that the word mark 'LORAM' was common to the trade and that there were several entities using and adopting identical marks. The Defendants found it reason enough to term their conduct as blameworthy and dishonest and also urged the Court to deny their plea of injunction.

It was argued on behalf of the Appellants that there was no question of approbate and reprobate, estoppel, waiver and acquiescence, since, both products were for different conditions. With regard to delay and acquiescence, it was prayed that since there was an overwhelming public interest involved and when the products were pharmaceutical and medicinal preparations, the Court had to ignore the vague assertions of the Defendant and had to grant the relief as prayed.

The Court took the Plaintiff's contentions during the Opposition proceedings before the Trade Mark Registry into consideration. It was taken note of by the Court that the Plaintiff's stand in the present case was at variance. The Plaintiff had contended that the Trade Mark was to be compared as a whole. Moreover, it was a well-adopted and general practice of the pharmaceutical industry to conceive and adopt a Trade Mark from its main molecule. However, the Plaintiffs had claimed originality and exclusivity with regard to their mark. The Plaintiffs had also contended that in case of mere registration without intention to use the mark, one does not get locus standi with regard to the mark.

The Court distinguished between the cases relied on by the Plaintiffs wherein the mark contained of an invented or coined word and hence wherein the granting of interim relief was justified. In this case, since the mark lacked originality as it was coined on the basis of the main ingredient of the medicinal product, the Court found that the Plaintiffs are not entitled to interim relief as prayed. Hence the motion was dismissed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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