On 17 July 2005, Medical Technologies filed a passing off action
against Neon before the City Civil Court, Ahmedabad after Neon
started using the mark ROFOL in 2004, which as per Medical
Technologies was similar to Medical Technologies' mark PROFOL
used since 1998. In its primary defence, Neon argued that it is the
prior adopter (although admitting that it was the subsequent user)
of the mark ROFOL since it applied for registration of the same in
1992 (when Medical Technologies was not even an entity in the
market) which subsequently proceeded to registration in 2001. The
City Civil Court was pleased to restrain Neon from using the mark
ROFOL on the basis of Medical Technologies' prior common law
rights in the mark PROFOL. Neon, thereafter, preferred an appeal
before the Gujarat High Court which was rejected. The Supreme Court
of India (Supreme Court), giving credence to the 'first in the
market' test, has passed a significant decision in the case of
Neon Laboratories Ltd v Medical Technologies Ltd & Ors
(Civil Appeal No 1018 of 2006) affirming the City Civil
Court's and Gujarat High Court's interim order restraining
Neon Laboratories Ltd (Neon) from using the mark ROFOL (which was
applied prior to the use of Medical Technologies Ltd's mark
PROFOL) on the basis of its similarity to Medical Technologies
Ltd's (Medical Technologies) mark PROFOL. In effect, the
Supreme Court held that a prior application for registration of a
mark is of no assistance if the use of the said mark is commenced
after twelve years that too after the rival's use of their mark
(in this case, Medical Technologies).
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
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