In yet another case the question as to the superiority of use over registration of a trademark came up for decision before the Delhi High Court. In Sun Pharmaceutical Industries Limited v. Cipla Limited 2007 (34) PTC 481 (Bom.) Cipla /Defendant had adopted the trademark "Graniset" in February, 1998 for a drug used for treating Chemotherapy and other similar therapies related nausea and vomiting. At that time no one was either using the said trademark or had applied for its registration. Accordingly, Cipla applied for registration in Class 5 in 1998. After advertisement of the application, the registration was granted in 2005 as no one opposed the application. After grnat of registration, Cipla started using the said trademark for its drug from July 2005. In 1999 Sun Pharmaceutical/Plaintiff also applied for an identical trademark "Graniset" in Class 5 for a drug used for identical treatment as that of Cipla. However, the compositions of both the drugs were different. The Active Pharmaceutical Ingredient (API) in Sun’s drug was "Granisetron" whereas the API in Cipla’s drug was "Ondansetron". Sun claimed to be have commenced the use of the said mark in respect of the drug on 1.12.2000. In consequence of Sun’s claimed use of an identical mark, Cipla filed a suit in the District Court of Delhi against Sun for infringement and passing off for their trademark ‘Grainset’. In that suit, Sun filed made a counter claim seeking an injunction against Cipla restraining it from using the trademark "Grainset" and/or any other identical or deceptively similar mark in respect of drugs.
Pending the disposal of its counterclaim in the above suit before the District Court in Delhi, Sun filed a fresh suit for identical relief before the Bombay High Court.
Contention
Sun submitted that mere registration of the trademark in the name of "Cipla" did not create any association with the product and hence of no consequence. The right to prevent passing off comes only with the usage of the mark and registration of the mark does not confer that right. Since Sun was prior user of the impugned mark, Sun was entitled to restrain Cipla from using the identical and/or deceptively similar trademark in respect of drugs and medicines. Sun contented even though the adoption of the trademark "Grainset" by it was later to Cipla but it was honest adoption being derived from API of its drug "Grainsetron".
Cipla on the other hand contented that since the registration of the trademark "Grainset" in Class 5 already existed in its name, Sun was duty bound to search the Trademark Register before adopting and using an identical mark in respect of the identical goods. Cipla further contented that relief of passing off cannot be granted to Sun merely because Sun’s prior use of Cipla’s registered trademark. It pointed out that adoption and use by Sun of an identical mark in respect of an identical drug was in bad faith. Cipla also pointed out that Sun had already sought an identical relief by way of a pending interlocutory application in the suit filed in Delhi and in order to falsely invoke the jurisdiction of the Bombay High Court, Sun had concealed this fact in the pleadings in bad faith.
Judgment
The Bombay High Court considered the question of aforesaid concealment of facts by Sun and held such concealment amounted to material suppression therefore; Sun was not entitled to interim relief on that count. On the question of the claim of injunction on prior use, Sun placed on record a plethora of cases that upheld the superiority of prior use over registration. The Court was of the view that it was possible to conceive that Sun was entitled to injunction on the basis of prior use, but it was necessary to establish beyond doubt that such adoption was completely innocent and honest. On analyzing the reasons for adoption of an identical mark by Sun, the Court overruled its explanation that it relied on market search and did not find any drug with similar or identical mark in the market. The Court held that from record it appears that Sun had prima facie knowledge of Cipla’s trademark when Sun applied for the registration of the identical mark for an identical drug. In the absence of a Trademark Search Report on record, the Court rejected the pleadings of Sun that it had conducted a prior search in the Trademark Register before adopting and applying for the trademark "Grainset".
After a week of closing the matter for Orders, Sun sought leave of the Court to adduce additional evidences in respect of the Trademark search conducted by it, but the Court denied Sun’s request for being belated and refused injunction against Cipla.
The case affirms the principle that use of a trademark plays all-important role provided that such adoption and use of the said trademark was innocent and honest.
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