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 same.
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 trademark.
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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