The acquiescence in relation to the use of a mark disentitles the proprietor of the mark to oppose it from being used. The case Macleods Pharmaceuticals Ltd versus Tidal Laboratories P Ltd 2006 (32) PTC 221(Bom) amply lays down the law in this matter. Also that registration of a trademark is not a crucial factor in denying relief in a passing off action.
A registered trademark gives to the registered proprietor the exclusive right to use the trademark in relation to the goods for which it is registered. It enables the proprietor to file a suit for infringement of this right based on the property acquired by registration whereas the action of passing off is based on misrepresentation of property in goodwill acquired through use of the mark.
Macleoids Pharmaceuticals Ltd. (Macleoids) has moved the court on cause of action of passing off under the provisions of Trademarks Act 1999. Macleoids is seeking an injunction from this court restraining the Tidal Laboratories P. Ltd (Tidal) from in any manner using the impugned trademark ‘Rabemax’ or any other mark deceptively similar to the plaintiff trademark of ‘Rabemac’ so as to pass off Macleoids’s product as that of the Tidal.
Macleoids’s case is that they are using the mark ‘Rabemac’ in relation to the medicinal preparations and that the application for registration of the mark under clause V of the Schedule to the Trademarks Act is pending. Further that the mark was conceived in 2001 though the goods came into the market only in 2002; therefore the user is mentioned from 2001. Macleoids is the exclusive user of the mark ‘Rabemac’ and Tidal is not entitled to use the said mark ‘Rabemac’ and/or any deceptively similar mark such as ‘Rabemax’ used by Tidal in relation to the medicinal preparations.
Tidal’s case is that they are the proprietor of the mark ‘Rabemax’ and therefore Macleoids is not entitled to maintain the action for passing off. The next contention is that the goods manufactured both by Macleoids and Tidal is a common molecule ‘Rabeprozale sodium’ therefore both use the word ‘Rabe’ to indicate that the goods are manufactured from the said molecule and it is also being used as prefix by many parties hence it is a generic word pertaining to the ingredient of the said medicine therefore has nothing so special about the same as far as Macleoids is concerned. Further that Tidal caused a search report to be made by the Trademark Attorney in the record of Trade Registry much before the mark of Macleoids came into the market and that after making such inquiries decided to have the mark ‘Rabemax’ instead of ‘Rabema’ and therefore it is not a dishonest adoption of the mark belonging to Macleoids.
Two issues spring out from the above argument and counter arguments.
 Is the registration of the mark a decisive factor in an action of passing off?
 Can relief be granted in a case of passing off action even if there is delay in bringing action once it is prima facie established that the adoption of the mark was itself dishonest?
It was opined by the learned judge that registration of the mark is but only one of the factor considered while granting the relief for passing off action though it may not be a decisive factor in refusing to grant relief in passing off action.
On the second issue the learned judge took into consideration the test of prior user to find out that by virtue of the sale in the market of goods belonging to Macleoids the mark was well-known in the market. It was held on perusal of documents that it is not in dispute that Tidal came in the market with the goods almost simultaneously with that of Macleoids therefore at the time when Tidal came in the market with intention to sell the goods it cannot be stated that by virtue of any prior user Macleoids has obtained such a reputation that the adoption of the mark by Tidal is with a dishonest intention to pass off his goods as that of Macleoids. Further that Tidal had intimated to Macleoids when they filed the application for registration of the mark ‘Rabemax’ in relation to its goods. Not only that Macleoids did not oppose the application before the Trademark Registry but even did not file a suit for passing off for almost two years. Macleoids has thus permitted Tidal to use the mark and the user of Macleoids of its own mark and Tidal of its mark has been concurrent for a considerable period of time of two years.
It was held that at this ad-interim stage no case is made out for grant of any ad-interim injunction.
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