Madras High Court
M/S.Apex Laboratories Pvt. Ltd vs Macleods Pharmaceuticals Limited on 23 January, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:211
C.S.(Comm.Div.) No.232 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment Reserved on 04.09.2024
Judgment Pronounced on 23.01.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.S (Comm. Div.) No.232 of 2020
M/s.Apex Laboratories Pvt. Ltd.
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai 600 032,
rep. by its Authorised Signatory,
D.Jude F.L.S.Durai Pandian ... Plaintiff
vs.
Macleods Pharmaceuticals Limited,
304, Atlanta Arcade, Marol Church Road,
Near Leela Hotel, Andheri Kurla Road,
Andheri (East), Mumbai 400 059. ... Defendant
PRAYER: Plaint filed under Order VII Rule 1 CPC and Order IV
Rule 1 of the Original Side Rules read with Sections 27, 28,29, 134,
135 of the Trade Marks Act, 1999 and Sections 51, 55, 62 of the
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C.S.(Comm.Div.) No.232 of 2020
Copyrights Act, 19572(1)(c)(i) & Section 7 of the Commercial Courts,
Commercial Division and Commercial Appellate Division of High
Courts Act, 2015 and prayed for the following judgment and decree
against the defendant:
(a) Permanent injunction restraining the Defendant, by itself, its
partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner infringing the plaintiff's registered trademark BILTEN
under No.4246358 in Class 5 by using a deceptively similar
trademark BELATIN or any other trademark deceptively similar to
the plaintiff's registered trademark or in any other manner
whatsoever;
(b) a permanent injunction restraining the Defendant, by itself,
its partners, men, servants, agents, distributors, stockiest,
representatives or any one claiming through or under them from in
any manner passing off and/or enabling others to pass off the
Defendant's products under the trademark BELATIN as and for the
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C.S.(Comm.Div.) No.232 of 2020
plaintiffs' products by manufacturing, selling, or offering to sell,
distributing, displaying, printing, stocking, using, advertising their
products with a trademark BELATIN which is deceptively similar to
the plaintiff's BILTEN trademark or in any other manner whatsoever;
(c) the Defendant be ordered to surrender to Plaintiffs for
destruction of all products, labels, cartons, dyes, blocks, moulds,
screen prints, packing materials and other materials bearing the
trademark BELATIN or any other mark deceptively similar to
plaintiffs' trademark and BILTEN;
(d) a preliminary decree be passed in favour of the Plaintiff
directing the Defendant to render account of profits made by use of
trademark BELATIN label and a final decree be passed in favour of
the Plaintiffs for the amount of profits thus found to have been made
by the defendant after the latter have rendered accounts; and
(e) for costs of the suit.
For Plaintiff : Mr.R.Sathish Kumar
Mr.G.Ramji
For Defendant : Mr.Navod Prasannan
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C.S.(Comm.Div.) No.232 of 2020
for M/s.M.S.Bharath
**********
JUDGMENT
The plaintiff is the registered proprietor of the trademark
BILTEN under trade mark No.4246358 in Class 5. By this suit, the
plaintiff seeks to restrain the defendant from infringing its registered
trademark by using the trademark BELATIN or any other trademark
deceptively similar to the plaintiff’s registered trademark and from
passing off its products under the trademark BELATIN as the
plaintiff’s products. In addition, the plaintiff seeks the surrender of
infringing material, rendition of accounts and a decree for profits in
terms thereof.
The Pleadings
2. In the plaint, the plaintiff asserts that it adopted the
trademark BILTEN in or about June 2019, and applied for
registration on 25.07.2019 in class 5 for medicinal and pharmaceutical
preparations. The plaintiff further states therein that the product
contains BILASTINE, as the main ingredient, and consequently is
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C.S.(Comm.Div.) No.232 of 2020
used as an antihistamine. Significantly, it is stated that the product
was launched in the market in November 2019 after obtaining the
drug licence on 15.10.2019. The monthly sales turnover for November
2019 through July 2020 is set out in paragraph 6 thereof. After stating
that the use of the trademark BELATIN by the defendant for
antihistamine tablets was noticed in August 2020, the plaintiff asserts
in paragraph 10 that it is the prior user. Because the trademarks are
deceptively similar, the plaintiff asserts that it is entitled to the reliefs
claimed as the prior user of a registered trademark. The defendant
filed a written statement in response to the plaint.
3. In the written statement, the defendant asserts that it
conceived of and adopted the trademark BELATIN in May 2019 and
applied for registration on 22.06.2019. By contrast, it was stated
therein that the plaintiff applied for registration of the trademark
BILTEN on 25.07.2019. The defendant further stated that trademarks
in the pharmaceutical field are often coined on the basis of the
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C.S.(Comm.Div.) No.232 of 2020
ailment, ingredient or targeted organ of the body. Consequently, it is
asserted that there can be no objection to the adoption and use of the
trademark BELATIN in respect of a BELASTINE preparation.
4. In paragraph 10 of the written statement, the defendant
expressly asserted that it conceived and adopted the trademark
honestly, and that a search of the register of trademarks was
conducted before applying for registration. After setting out the
monthly sales turnover and monthly promotional expenses for
February 2020 to August 2020 in paragraphs 12 and 13 respectively,
at paragraph 16, the defendant asserted that its use of the trademark
was honest and concurrent, and that the plaintiff acquiesced in such
use. By further asserting that it suffered losses due to the institution
of the suit and the ex parte order obtained therein, the defendant
made a counter claim for Rs.50,00,000/-.
5. The plaintiff filed a written statement in response to the
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C.S.(Comm.Div.) No.232 of 2020
counter claim. In that pleading, the defendant’s assertion of use since
31.10.2019 or 01.11.2019 was denied by stating that the documents
filed by the defendant do not corroborate use from November 2019
and that mere transfer of goods from the manufacturer to the
defendant does not qualify as commercial use. The plaintiff further
asserted in paragraph 7 that it placed orders to manufacture products
bearing the trademark BILTEN in April 2019. The assertion that the
plaintiff’s application was on “proposed to be used” basis was,
therefore, denied. In paragraph 16, the plaintiff denied that the
defendant is an honest and concurrent user and that the plaintiff
acquiesced in such use. By denying that the goodwill and reputation
of the defendant was damaged by the institution of the suit, the
counter claim was refuted.
Issues and Evidence
6. Upon completion of pleadings, the following issues were
framed:
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C.S.(Comm.Div.) No.232 of 2020“(i) Whether the plaintiff is the registered
proprietor of the Trademark BILTEN?
(ii) Whether the plaintiff is the prior user of
the trademark BILTEN?
(iii) Whether the adoption of the trademark
BILTEN by the plaintiff in respect of its
pharmaceutical preparation was honest?
(iv) Whether the trademarks BILTEN and
BELATIN are deceptively similar to each other?
(v) Whether the defendant adopted the
trademark BELATIN prior to that of the plaintiff’s
BILTEN? If so, whether that would entitle them to
use the trademark BELATIN and whether the
plaintiff’s prayer for injunction is liable to be
refused?
(vi) Whether the suit is liable to be rejected
on account of delay, laches or acquiescence?
(vii) Whether the plaintiff is entitled to a
decree for infringement of trademark as prayed
for?
(viii) Whether the plaintiff is entitled to a
decree for passing off as prayed for?
(ix) Whether the plaintiff is entitled to a
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C.S.(Comm.Div.) No.232 of 2020preliminary decree as prayed for?
(x) Whether the plaintiff is entitled to a
decree for delivery up and destruction as prayed
for?
(xi) Whether the plaintiff’s suit is vexatious
and whether the defendant is entitled to succeed in
their counter claim for damages of Rs.50,00,000/-
against the plaintiff?
(xii) Whether the defendant is entitled for
any damages as prayed for?
(xiii) Whether the parties are entitled to the
relief as prayed for?
(xiv) What other reliefs the parties are
entitled to?
7. The plaintiff filed an affidavit by way of evidence of Mr.Jude
F.L.S. Durai Pandian, who was examined as PW1. In course of the
examination-in-chief of PW1, 9 documents were exhibited as Exs.P1
to P9. PW1 was cross-examined by learned counsel for the defendant.
The defendant filed an affidavit by way of evidence of
Mr.T.R.Channakeshava, who was examined as DW1. In course of the
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examination-in-chief of DW1, 12 documents were exhibited as Exs.1
to 12. DW1 was cross-examined by learned counsel for the plaintiff.
Counsel and their contentions
8. Oral arguments on behalf of the plaintiff were advanced by
Mr.R.Sathish Kumar and on behalf of the defendant by Mr.Navod
Prasannan. Both parties filed written arguments and additional
written arguments.
9. Learned counsel for the plaintiff submitted that the
application for registration of the trademark ‘BILTEN’ was filed in
July 2019 on “proposed to be used” basis. He next submitted that the
plaintiff started using the trade mark from November 2019. As
regards the defendant, he submitted that the defendant applied for
registration of the trade mark BELATIN on 22.06.2019 on “proposed
to be used” basis. After pointing out that both trademarks are
derived from the active pharmaceutical ingredient (API),
BILASTINE, which is an antihistamine, he submitted that the
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C.S.(Comm.Div.) No.232 of 2020
principal question is with regard to the prior user of the respective
trademarks.
10. By referring to the purchase order dated 25.04.2019 for the
plaintiff’s product BILTEN (Ex.P8), learned counsel further
contended that it establishes adoption of the trademark by the
plaintiff in April, 2019. By referring to Exs.P4 and P9, which are
invoices issued by the plaintiff and by plaintiff’s manufacturers,
respectively, he contended that these documents evidence use of the
plaintiff’s trademark from November, 2019. As regards the
defendant, he submits that the sales turnover is only in respect of the
period commencing from February, 2020 (Ex.D11). As regards Ex.D9,
learned counsel submitted that the said document merely establishes
that the manufacturer, Synokem Laboratories Limited, sent the
products to the defendant on 31.10.2019. The actual sale was only
from February, 2020 as evidenced by Ex.D11. In effect, learned
counsel submitted that the plaintiff adopted the trademark BILTEN
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in April, 2019, as evidenced by Exs.P8 and P9, whereas, the
defendant adopted the trade mark BELATIN in May, 2019, as
evidenced by Ex.D2. With regard to use, he contended that the
plaintiff has established use since November, 2019, as evidenced by
Ex.P4, whereas the defendant has shown use only from February,
2020, as evidenced by Ex.D11.
11. As for registration, he submitted that the plaintiff has
registered the trademark BILTEN under trade mark No.4246358
with effect from 25.07.2019, whereas the defendant’s trademark is not
registered as on date. Consequently, learned counsel submitted that
Issue Nos.1 and 2 are liable to be decided in favour of the plaintiff.
Since the plaintiff’s adoption is also prior to the defendant, he further
submitted that Issue No.5 is also liable to be decided in favour of the
plaintiff.
12. As regards the contention that the trademarks of both the
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plaintiff and the defendant are derived from the API BILASTINE,
learned counsel contended that a registered trademark derived from
the name of the API is also entitled to protection if a deceptively
similar later mark is used. In support of this contention, learned
counsel referred to and relied upon the judgment of the Hon’ble
Supreme Court in Cadila Heath Care Ltd. v. Cadila Pharmaceuticals
Limited, AIR 2001 SC 1952 (Cadila), particularly paragraphs 22, 23, 26
and 27 thereof. He also relied upon the judgment of this Court in
Wockhardt Limited v. Aristo Pharmaceuticals Limited, (1999) (5) CTCOL
921 (Mad), wherein the defendant’s trademark SPASMO-FLEXON
was held to be deceptively similar to the plaintiff’s trademark
SPASMO-PROXYVON although the two trademarks were derived
from the word SPASMO indicating that it was intended to provided
relief from spasms or spasmodic pain. He also relied upon the
judgment of the Division Bench of this Court in M/s.Ciba Giegy
Limited. v. Crosslands Research Laboratories Ltd, 1995 SCC OnLine Mad
569, wherein the plaintiff was held to be entitled to an interim order
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preventing the use of the marks EMUGEL OR EUGEL or any other
mark deceptively similar to the plaintiff’s trademark EMULGEL. The
judgment of the Delhi High Court in Himalaya Drug Company v.
S.B.L. Limited, 2013 (53) PTC 1 (DEL)(DB) was also relied on in this
context.
13. With regard to the allegation of delay and laches, learned
counsel relied upon the judgment of the Hon’ble Supreme Court in
Dhariwal Industries Ltd. v. M.S.S.Food Products, AIR 2005 SC 1999, to
contend that relief should not be denied on that ground. He
concluded his submissions by reiterating that the prior user takes
precedence under trademark law. For this proposition, he relied on
the judgments of the Hon’ble Supreme Court in S.Syed Mohideen v.
P.Sulochana Bai, (2016) 2 SCC 683 (Syed Mohideen) and Neon
Laboratories Private Limited v. Medical Technologies Limited, 2015 (64)
PTC 225 (Neon Laboratories).
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14. In response to these contentions, learned counsel for the
defendant submitted that the defendant applied for registration of
the trademark ‘BELATIN’ in June, 2019, which is prior to the date of
application by the plaintiff. He further submitted that the defendant
conceived and adopted the trademark BELATIN as early as in May,
2019. He also submitted that the defendant undertook a search of the
trademarks register to ascertain whether there are deceptively
similar marks on the register. He pointed out that the defendant’s
manufacturer, M/s.Synokem Pharmaceuticals, obtained a drug
licence to manufacture the product bearing the trademark BELATIN
on 15.10.2019. After obtaining such licence, the defendant launched
the product on 31.10.2019 and has commercially exploited the
product continuously and extensively thereafter.
15. After reiterating that both the trademarks are derived from
the API, BILASTINE, learned counsel pointed out that other drug
manufacturers, such as Faes Farma, S.A. and Glenmark
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Pharmaceuticals Limited have adopted the trademarks BILAXTEN
and BELTAS, respectively. Learned counsel next contended that the
suit was filed only in August, 2020, whereas the defendant applied
for registration of its trademark in July, 2019. Since the plaintiff did
not object to the defendant undertaking manufacturing and
marketing of products bearing the trademark BELATIN since May,
2019, he submitted that the plaintiff is not entitled to injunctive
relief. By referring to the answer of PW1 to Question No. 9, he
submitted that PW1 admitted that the plaintiff’s trademark BILTEN
was adopted in June 2019. By contrast, he submitted that DW1, in
response to Question No.2, stated that the defendant’s trademark
BELATIN was adopted in May, 2019.
16. The next contention of learned counsel for the defendant
was that the right of the prior trademark applicant cannot be
interfered with by the later applicant. In support of this proposition,
he relied upon the judgment of the Bombay High Court in Sun
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Pharmaceuticals Ltd v. Cipla, 2007 109 (1) Bombay L.R.0445. He also
contended that actual use of the trademark is not necessary to
acquire proprietary rights in such trademark. For this proposition,
the judgment of the Intellectual Property Appellate Board in Plus
Systems v. Plus Computers, (IPAB) [MIPR 2008 (3) 105], was relied
upon. By relying on the judgment of this Court in USV v. Systopic
Laboratories 2004 SCC Online Mad 9, learned counsel contended that it
is a common practice in the field of medicine that drugs are named
either after the name of the organ which it treats or by the name of
the pharmaceutical ingredient. For the same proposition, the
judgment of the Division Bench of the Bombay High Court in Bal
Pharma Limited v. Wockhardt Limited, Appeal No.498 of 2002 in Notice of
Motion No.725 of 2002 in Suit No.1305 of 2002 dated 12.06.2002 (Bal
Pharma), the judgment of the Delhi High Court in Astrazeneca UK Ltd
v. Orchid Chemicals and Pharmaceuticals Ltd, MANU/DE/8684/2006
(Astrazeneca) and the judgment of the Bombay High Court in Medley
Pharmaceuticals v. Khandelwal Laboratories, Notice of Motion No.2808 of
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C.S.(Comm.Div.) No.232 of 2020
2002 in Suit No. 3323 of 2002 were relied on.
17. Learned counsel for the defendant then contended that the
defendant is entitled to protection as an honest and concurrent user
even if the defendant commenced use of the trademark BELATIN
shortly after the plaintiff’s first use of the trademark BILTEN. By
referring to Section 12 of the Trade Marks Act, 1999 (the TM Act),
learned counsel submitted that an honest and concurrent user is
entitled to register an identical or similar trademark even in respect
of identical or similar goods or services. A fortiori, he submitted that
honest and concurrent use qualifies as a defence in an infringement
and passing off action. In support of this proposition, he relied on the
judgment of the Delhi High Court in Lowenbrau AG and another v.
Jagpin Breweries Limited and another, order dated 14.01.2009 in I.A. Nos.
11355/2007 and 13772/2007 in CS (OS) No.1810 of 2007 (Lowenbrau)
and the judgment of the Bombay High Court in Vanita Dilip Chawla v.
Fresh Meals India Private Ltd. And Ors, Notice of Motion No. 195 of 2010
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C.S.(Comm.Div.) No.232 of 2020
in Suit No.117 of 2010.
18. By way of rejoinder, learned counsel for the plaintiff
submitted that honest and concurrent use is statutorily recognized in
Section 12 of the TM Act for purposes of registration and not as a
defence in infringement proceedings. After pointing out that
infringement proceedings are initiated under Chapter IV of the TM
Act, learned counsel submitted that the defence of honest and
concurrent user is not recognized under Sections 30, 33, 34 or 35 of
the TM Act, which deal with defences to an infringement action. In
support of the contention that the defence of honest and concurrent
user is not available in an infringement or passing off action, learned
counsel relied upon the judgment of the Hon’ble Bombay High Court
in Abdul Rasul Nurullah v. Regal Footwear, 2023 SCC OnLine Bom 10
(Regal Footwear) and the judgment of this Court in Sun
Pharmaceuticals Limited v. Kivi Labs, judgment dated 11.03.2024 in
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C.S.No.87 of 2012 (Kivi Labs).
Issue Nos.1, 2, 3 and 5:
19. These issues pertain to whether the plaintiff is the registered
proprietor of the trademark BILTEN and as to whether the plaintiff
is the prior adopter and user of the trademark BILTEN and whether
such adoption was honest. Since these issues are interrelated, they
are clubbed and disposed of jointly. The plaintiff has placed on
record the certificate of registration relating to the trademark
BILTEN. Such certificate of registration has been exhibited as Ex.P2.
The said certificate evidences that the trademark was registered with
effect from 25.07.2019. Therefore, Issue No.1 is decided in favour of
the plaintiff. As regards the date of use of the trade mark BILTEN
and BELATIN, the plaintiff has placed on record a series of invoices,
which were marked as Exs.P4 and P9, in each case collectively. The
invoice issued by the plaintiff (Ex.P4) evidences the use of the
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trademark BILTEN in relation to sale of pharmaceutical products
from November, 2019.
20. In order to establish prior adoption, the defendant relied on
the application filed on 22.06.2019 under trademark application
No.4214272 (Ex.D3). The defendant also relied upon email
communications exchanged between 08.05.2019 and 30.05.2019
(Ex.D2) and the examination report issued by the Registrar of
Trademarks to the defendant on 07.08.2019 (Ex.D5). These
documents clearly indicate that the trademark BELATIN was
conceived and adopted by the defendant in May 2019. However, they
do not constitute evidence of use of the trademark.
21. As regards use, the defendant relied on invoice dated
31.10.2019(Ex.D9). This invoice was issued by Synokem
Pharmaceuticals Limited to the defendant in respect of an order for
the manufacture of pharmaceutical preparations under the
trademark BELATIN. This document clearly evidences use of the
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trademark in relation to the manufacture of the product by Synokem
Pharmaceuticals Ltd, but is insufficient to establish commercial use
of the trademark, i.e. use in relation to sale by the defendant. The
pleadings of the defendant assume significance in this connection. As
narrated earlier, in paragraphs 12 and 13 of the written statement, the
sales turnover and promotion expenses, respectively, were provided
only from February 2020 (see also Ex.D11). In paragraph 16 thereof,
in relevant part, the defendant stated as under:
“…. Nevertheless, despite knowing the fact that the
defendant was the prior applicant of the trademark
BELATIN, the plaintiff has allowed the defendant to
carry on the manufacturing and marketing of its
pharmaceutical product under the subject trademark
BELATIN admittedly since February 2020….”(emphasis
added)In the additional written arguments on behalf of the defendant dated
19.09.2024, it was stated, in relevant part, as under, in paragraph 11
thereof:
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C.S.(Comm.Div.) No.232 of 2020“11. The sales of the Plaintiff and Defendant while
being compared, the sale of the Plaintiff was admittedly only
three months ahead ie. the medicines of the Plaintiff went on
sale in November 2019 and the sale of Defendant was
launched in February, 2020….”
22. The above evidence indicates that the defendant is the prior
adopter of the mark BELATIN, but is not the prior user thereof. Such
evidence also indicates that the plaintiff’s use predated use by the
defendant by about three months. There is also nothing on record to
indicate that the plaintiff adopted the trademark BILTEN after
becoming aware of the defendant’s adoption of the trademark
BELATIN. Therefore, the adoption of the trademark BILTEN by the
plaintiff was honest. The above issues are disposed of as indicated
herein.
Issue Nos.4, 6, 7, 8, 9 and 10:
23. These issues relate to whether the trademarks BILTEN and
BELATIN are deceptively similar and whether the plaintiff is entitled
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C.S.(Comm.Div.) No.232 of 2020to the reliefs claimed, including whether the plaintiff forfeits the right
to relief on account of delay.
24. The admitted position is that both the trademarks are
derived from the API, BILASTINE. Since the plaintiff’s trademark is
derived from the name of the API, on the spectrum of trademarks, it
will not be construed as an arbitrary or invented mark.
Consequently, deceptive similarity would be gauged by also taking
into account the strength of the mark. The defendant relied upon Bal
Pharma, Astrazeneca and other cases to contend that a trademark
based on the API or the name of the disease is not entitled to
protection if the defendant is able to point to reasonable differences
between its mark and that of the plaintiff. In response, the plaintiff
relied on the judgment of the Hon’ble Supreme Court in Cadila and
Neon Laboratories to contend that the highest degree of protection
should be extended to trademarks used in relation to pharmaceutical
products by taking into account compelling public interest in
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avoiding confusion or deception. In Indian Immunologicals Limited v.
IPCA Laboratories Private Limited 2024 (97) PTC 601 [Mad], I
considered two trademarks derived from the name of the generic
drug amoxycillin. After noticing that the degree of protection is less
than in the case of an arbitrary trademark, I also examined the
matter from the perspective of likelihood of confusion or deception.
Since the appellant’s trademark, in that case, was used only in
relation to pharmaceutical products intended for the treatment of
animals, whereas the respondent’s trademark was used only for the
treatment of human beings, I granted relief to the appellant therein.
By contrast, in the case at hand, both the trademarks are applied to
pharmaceutical preparations used for the treatment of human
beings. Therefore, the likelihood of deception or confusion cannot be
disregarded. Given the degree of similarity between the two
trademarks and use in relation to identical goods, notwithstanding
common origin from the API, I conclude that there is deceptive
similarity.
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Honest and concurrent use
25. This leads to the question whether the defendant is entitled
to protection in an infringement action as an honest and concurrent
user. Before examining whether such protection is available under
the TM Act, it is necessary to examine whether the defendant’s use
was honest especially because the answer to this question would also
be material in considering both the relief of passing off and damages.
The defendant pleaded that it conceived of and adopted the
trademark BELATIN in May 2019. As evidence thereof, email
communications between 08.05.2019 and 30.05.2019 were exhibited
collectively as Ex.D2. Ex.D2 discloses that a search was conducted in
the trademarks registry to ascertain whether similar trademarks exist
on the register. The trademark application dated 22.06.2019 was also
exhibited as Ex.D3 and this was admittedly prior to the plaintiff’s
application dated 25.07.2019 for registration of the trademark
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BILTEN (Ex.D4). The defendant has also placed on record the
purchase order issued to its manufacturer on 12.09.2019 (Ex.D7), the
licence issued for the manufacture of BELATIN (Ex.D8) and the
invoice issued by the manufacturer on 31.10.2019 (Ex.D9). All these
exhibits pre-date commercial use of the plaintiff’s trademark, and
establish that the defendant’s adoption was honest.
26. Although I concluded earlier that Ex.D9 does not qualify as
commercial use of a trademark, Ex.D11 establishes such use from
February 2020. Thus, there is evidence of use by the defendant about
three months after the plaintiff’s first commercial sale and, in the
facts and circumstances, such use was honest. The expression used in
section 12 of the TM Act is honest concurrent use or other special
circumstances and not merely honest use. Therefore, ordinarily,
whether the defendant’s use was concurrent for purposes of section
12 or any other provision of the TM Act would fall for consideration.
In this case, however, the defendant’s application for registration of
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trademark is pending consideration by the Registrar of Trade Marks,
and it is likely, even probable, that the defendant would seek
registration by contending that its use is honest and concurrent or
that there are other special circumstances to permit registration
under section 12. In order to enable the Registrar of Trade Marks to
exercise statutory jurisdiction in this regard without being fettered by
my decision, I intend to move on to examine whether honest and
concurrent use is recognised as a defence to an infringement action
and circle back to concurrency only if I conclude that such defence is
available.
27. Section 12 of the TM Act is set out below:
“12. Registration in the case of honest
concurrent use, etc.—In the case of honest concurrent use or
of other special circumstances which in the opinion of the
Registrar, make it proper so to do, he may permit the
registration by more than one proprietor of the trade marks
which are identical or similar (whether any such trade mark
is already registered or not) in respect of the same or similar
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C.S.(Comm.Div.) No.232 of 2020
goods or services, subject to such conditions and limitations,
if any, as the Registrar may think fit to impose. ”
The Trade and Merchandise Marks Act, 1958 (the TM Act 1958)
contained an identical provision in section 12(3) thereof.
28. As contended by learned counsel for the plaintiff, Section 12
is placed in Chapter II of the TM Act, which deals with the register
and conditions for registration. The effect of registration is dealt with
in Chapter IV, which contains the rights conferred by registration
and the defences available to a person charged with infringement.
With regard to the rights conferred by registration, section 28, in
relevant part, is as under:
“28. Rights conferred by registration- (1) Subject to
the other provisions of this Act, the registration of a trade
mark shall, if valid, give to the registered proprietor of the
trade mark the exclusive right to use of the trade mark in
relation to the goods or services in respect of which the trade
mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by29/48
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C.S.(Comm.Div.) No.232 of 2020this Act.
….
(3) Where two or more persons are registered proprietors of
trade marks, which are identical with or nearly resemble each
other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are
subject to any conditions or limitations entered on the
register) be deemed to have been acquired by any one of those
persons as against any other of those persons merely by
registration of the trade marks but each of those persons has
otherwise the same rights as against other persons (not being
registered users using by way of permitted use) as he would
have if he were the sole registered proprietor.”On closely examining Chapter IV, the contention of learned counsel
for the plaintiff that the defence of honest and concurrent use does
not find place in Chapter IV is liable to be accepted. On perusal of the
TM Act 1958, I find, similarly, that the statute did not provide for
honest and concurrent use as a defence to an action for infringement.
Before proceeding further, it would be profitable to examine the
relevant defences in Chapter IV.
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29. Section 34, which falls within Chapter IV, provides for the
saving of vested rights. This provision is particularly relevant for the
determination of this case and is, therefore, set out below:
“34. Saving for vested rights.—
Nothing in this Act shall entitle the
proprietor or a registered user of registered trade
mark to interfere with or restrain the use by any
person of a trade mark identical with or nearly
resembling it in relation to goods or services in
relation to which that person or a predecessor in
title of his has continuously used that trade
mark from a date prior—
(a) to the use of the first-mentioned
trade mark in relation to those goods or
services by the proprietor or a predecessor in
title of his; or
(b) to the date of registration of the
first-mentioned trade mark in respect of those
goods or services in the name of the proprietor of
a predecessor in title of his,whichever is the earlier, and the Registrar shall
not refuse (on such use being proved) to register
the second mentioned trade mark by reason only of31/48
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C.S.(Comm.Div.) No.232 of 2020the registration of the first-mentioned trade
mark.“
(emphasis added)As is evident from the above extract, Section 34 deals expressly with
and protects a prior user of an identical or deceptively similar
trademark in relation to similar goods or services provided such use
also predates registration by the person alleging infringement. As a
result, use of an identical or similar trademark by a prior user cannot
be interfered with or restrained even by a registered proprietor of a
later mark. This provision underscores the primacy and significance
attached to use in trademark law as also held in Syed Mohideen and
Neon Laboratories. Importantly, it also indicates that Parliament
applied its mind to use-based protection in relation to an
unregistered trademark, but confined such protection to prior use
without extending the same to honest and concurrent use. With
regard to honest and concurrent use or other special circumstances,
the TM Act enables a person asserting such use or other special
circumstances to apply for registration under section 12 and, if
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C.S.(Comm.Div.) No.232 of 2020successful, rely on sub-section (3) of section 28 to resist an action for
infringement at the instance of the earlier registrant. Before drawing
definitive conclusions, however, it would be instructive to consider
precedents.
30. In D.Adinarayana Setty v. Brook Bond Tea of India Limited,
1959 SCC OnLine Kar 79 (Adinarayana Setty), a Division Bench of the
then Mysore High Court examined whether the defence of honest
and concurrent use is available in an action for infringement in the
statutory context of the Trade Marks Act, 1940 (the TM Act 1940).
Sub-section (2) of section 10 of the TM Act 1940 was in pari materia
with section 12 of the TM Act. Interestingly, the TM Act 1940 also did
not recognise honest and concurrent use of an unregistered
trademark as a defence to an action for infringement. In relevant
part, the Court held as under:
“At the time of the suit the respondents were the
registered proprietors of the mark and sued as
such for infringement. One of the pleas, as already
stated, was that of honest and concurrent user. It33/48
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C.S.(Comm.Div.) No.232 of 2020must be pointed out in this connection that what
is commonly described as a plea of honest and
concurrent user in an action for infringement
really connotes that the defendant contends that
on the strength of honest and concurrent user he
is entitled to get his mark also registered under the
provisions of law. It is only upon the registration
that the plea becomes a complete and absolute plea
and not before. When, therefore, an unregistered
proprietor, if such an expression is permissible,
raises a plea of honest and concurrent user in a
suit for infringement at the instance of a
registered proprietor, the proper thing for the
defendant to do to prove the bona fides of his claim
is to make an application for registration on the
strength of honest and concurrent user and
simultaneously ask the court to stay further
proceedings in the suit. In such an event, the
proper course for the court to take would also be to
stay further proceedings so that the defendant
may substantiate his defence, because to refuse to
stay and proceed with the suit would be to deprive
the defendant of a substantial and strong defence.
Another reason why the suit should, be stayed
pending the completion or disposal of the
application for registration is that the extent and
ambit of the injunction which the court may grant
will also depend to a considerable extent upon the
conditions and limitations, if any, which the
Registrar might impose while granting the
registration in terms of sub-section (2) of Sec.10.”Especially in light of section 28(3) of the TM Act, I concur with the
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C.S.(Comm.Div.) No.232 of 2020ratio of Adinarayana Setty that a plea of honest and concurrent use
would constitute a valid defence to an action for infringement only
upon registration of the later mark and not otherwise. Indeed, even
the judgment of the England and Wales Court of Appeal, in the
statutory context of Article 4(1)(a) of Directive 89/104/EEC, in
Budejovicky Budvar Narodni Podnik v. Anheuser Busch Inc., [2012] 3 All
ER 1405, points in the same direction.
31. This Court, in Kivi Labs, held that the TM Act does not
provide for honest and concurrent use being accepted as a defence to
an infringement action. A similar view was expressed in Regal
Footwear by the Bombay High Court. In Lowenbrau, the Delhi High
Court refused interim relief and made an observation that honest and
concurrent use qualified as a defence under the TM Act 1958 and
under the TM Act. The basis for such observation is not set out
therein and, in any event, I am unable to endorse that view. In Raman
Kwatra and another v. KEI Industries Limited, Judgment dated 06.01.2023
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C.S.(Comm.Div.) No.232 of 2020
in FAO(OS)(COMM) 172/2022 & CM Appeal 30278/2022, a Division
Bench of the Delhi High Court set aside an interim order on the
ground that the plaintiff’s trademark did not cover the goods of the
defendant. In passing, a prima facie observation was made that honest
and concurrent use and other special circumstances could be the
basis to resist a restraining order. As indicated in the order itself, this
observation cannot be characterised as the ratio. Therefore, on
surveying relevant precedents, I conclude that the defence of honest
and concurrent use is not available to a defendant in an action for
infringement unless such party previously succeeded in registering
its trademark on such basis. Whether any other defence is tenable
merits a brief discussion.
32. On scanning the defences in Chapter IV, the only situation
in which later user is protected is if there is acquiescence, in terms of
Section 33, by the earlier user. Although acquiescence was pleaded
by the defendant, the pleaded case of the plaintiff is that it
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C.S.(Comm.Div.) No.232 of 2020
discovered use of the trademark BELATIN by the defendant in the
third week of August 2020 and filed the suit by the end of that
month. The evidence on record also indicates that the plaintiff has
opposed the defendant’s application for registration of its trademark,
which is still pending decision. Therefore, the only reasonable
conclusion is that the defendant has failed to establish acquiescence
even as per common parlance and common law, much less as per
section 33 of the TM Act, which requires acquiescence for a
continuous minimum period of five years in the use of a registered
trademark.
33. As a corollary to the above conclusion, the plaintiff is
entitled to exercise statutory rights under sections 27(1) and 28 of the
TM Act by obtaining injunctive relief in respect of infringement.
Since the relief is inter alia in the nature of permanent injunction, if
the defendant were to succeed in its application for registration, the
defendant should be granted leave to apply for modification of the
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C.S.(Comm.Div.) No.232 of 2020
decree. Indeed, as held in Adinarayana Setty, if the defendant had
applied, the appropriate course of action would have been to defer
final adjudication of this suit until the application for registration
was decided. No such application was, however, made. The
defendant has used the trademark BELATIN continuously since
February, 2020. This warrants providing reasonable time of four
months to the defendant to liquidate inventory bearing the
trademark before the injunction takes effect. Whether the plaintiff is
entitled to damages would, however, depend on several factors such
as proof of loss, which I deal with later.
34. As regards passing off, the plaintiff would only be entitled
to relief upon satisfying the classical trinity by establishing: that the
defendant has misrepresented its goods as that of the plaintiff; that
the plaintiff’s trademark had acquired reputation and goodwill; and
that the same was damaged by the defendant’s misrepresentation.
This should be tested as of the date of use by the plaintiff in
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C.S.(Comm.Div.) No.232 of 2020
November 2019. As adverted to earlier, the defendant adopted the
trademark BELATIN in May, 2019. There is clear evidence of the
application of the trademark to products manufactured for the
defendant by Synokem Pharmaceuticals Limited in October, 2019.
The defendant commenced commercial sale in February, 2020. It
should be borne in mind that it was concluded earlier that the
evidence supports the conclusion that the defendant’s adoption and
use was honest. Hence, it cannot be said that the defendant was
guilty of misrepresentation or of piggy-backing on the plaintiff’s
reputation and goodwill. Therefore, the plaintiff is not entitled to
relief in respect of passing off.
Issue Nos.11 to 14:
35. In view of the conclusion that the plaintiff is the prior user
of the trademark BILTEN and is entitled to exercise its statutory
rights under the TM Act, including by instituting this suit, the
defendant is not entitled to the counter claim for damages. Issue
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C.S.(Comm.Div.) No.232 of 2020
Nos.11 and 12 are decided, therefore, in favour of the plaintiff and
against the defendant. Turning to issues 13 and 14, the evidence on
record clearly indicates that the defendant commenced use of the
trademark BELATIN honestly in February, 2020 after conceiving and
adopting the trademark in May, 2019. The use by the plaintiff
preceded use by the defendant by only about three months. It bears
repetition that it was concluded earlier that such use is honest. The
defendant has used the trademark BELATIN continuously since
February, 2020, and there is no evidence of loss to the plaintiff as a
consequence. Hence, the plaintiff is not entitled to damages and the
relief is required to be modified by taking these aspects into account.
Since costs follow the event, as the partly successful party with
regard to injunctive relief for infringement, the plaintiff is entitled to
reasonable costs.
36. Before concluding, one final aspect should be provided for.
As stated earlier, the defendant’s application for registration is
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C.S.(Comm.Div.) No.232 of 2020
pending consideration by the Registrar of Trade Marks. For the
avoidance of doubt, it is clarified that such application may be
decided uninfluenced by the conclusions herein. It is further clarified
that the defendant is granted leave to apply for modification or
discharge of the decree of permanent injunction for infringement if
the application for registration were to be allowed, conditionally or
otherwise.
37. Therefore, the suit is decreed in terms of prayer clauses (a)
and (c) of paragraph 27 of the plaint subject to the qualifications set
out below. The defendant is permitted to liquidate all inventory of
fully manufactured medicines bearing the trademark BELATIN as on
the date of this decree provided such inventory is liquidated within
four months from the date of receipt of a copy of the decree. A
statement of such inventory shall be made available to the plaintiff
within one week from the date of decree. Except as indicated above,
the injunction shall operate with immediate effect. The relief granted
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C.S.(Comm.Div.) No.232 of 2020
in terms of clause (c) of paragraph 27 shall, consequently, be
enforceable only upon expiry of the said four month period. The
defendant is also granted leave to apply for modification or
discharge of the decree [clauses (a) and (c) of paragraph 27] if the
defendant’s trademark is registered by the Registrar of Trade Marks,
conditionally or otherwise. The reliefs claimed as prayers (b) and (d)
of paragraph 27 are rejected. The counter claim of the defendant is
dismissed. The defendant shall pay to the plaintiff a sum of Rs.3
lakhs towards court fees, reasonable lawyer’s fees and expenses.
23.01.2025
Index : Yes /No
Internet : Yes /No
Speaking/
Non-Speaking order : Yes/ No
Neutral Citation : Yes/ No
kal
Plaintiff's witness:
Mr.Jude F.L.S.Durai Pandian - P.W.1
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C.S.(Comm.Div.) No.232 of 2020
Defendant's witness:
Mr.Channakeshava T.R. - D.W.1
Documents exhibited by the plaintiff:
Exhibits Documents
Ex.P1 The original board resolution dated 19.07.2023.
Ex.P2 The certified copy of the trademark registration
under no.4246358 in class 5 by the plaintiff. (The
defendant side strongly objected to mark this
document as there is no permission to mark the
legal proceeding certificate and hence it is marked
subject to proof and relevance.)
Ex.P3 The photocopy of the drug license issued to the
manufacturer of the plaintiff dated 16.10.2019.
(objection as the document marked is a photo copy
and hence marked subject to proof and relevancy)
Ex.P4 The series of original invoices from November 2019
for the plaintiff’s sale of products bearing the trade
mark BILTEN. (The defendant side objected as the
originals marked differ with the photocopy already
filed.
Ex.P5 The copy of the plaintiff’s product carton for the
trademark BILTEN. (The defendant side objected to
mark this document as it is a photocopy)
Ex.P6 The copy of the photocopy of the defendant
product carton for the trademark BELATIN. (The
defendant side objected to mark this document as it
is a photocopy)
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C.S.(Comm.Div.) No.232 of 2020
Exhibits Documents
Ex.P7 The copy of the status report of the trade mark
BELATIN, filed before the trade mark office dated
22.06.2019.
Ex.P8 The original purchase order dated 25.04.2019 for
the plaintiff’s product BILTEN. (The defendant side
objected as the originals marked differ with the
photocopy already filed)
Ex.P9 The The original invoices from the plaintiff’s
manufacturer to the plaintiff and its dealers with
the purchase order date in April, 2019. (The
defendant side objected as the originals marked
differ with the photocopy already filed)
Documents exhibited by the defendant:
Exhibits Documents
Ex.D1 The original Board Resolution of the Defendant in
favour of Mr.Channakeshava T.R.
Ex.D2 The Email communications evidencing the
conception and use if the trademark BELATIN by
the defendant from 08.05.2019 to 30.05.2019.
(Affidavit under Section 65 B of the Indian
Evidence Act filed and recorded)
Ex.D3 The online printout of TM Application under
no.4213272 filed by the Defendant for the
trademark BELATIN dated 22.06.2019. (Affidavit
under Section 65 B of the Indian Evidence Act filed
and recorded)
Ex.D4 The online printout of TM Application under
no.4246358 filed by the plaintiff for the trademark
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C.S.(Comm.Div.) No.232 of 2020
Exhibits Documents
BILTEN dated 25.07.2019. (Affidavit under Section
65 B of the Indian Evidence Act filed and recorded)
Ex.D5 The online printout of examination report issued to
defendant in respect of BELATIN TM application
dated 07.08.2019. (Affidavit under Section 65 B of
the Indian Evidence Act filed and recorded)
Ex.D6 The online printout of Journal publication in
respect of plaintiff’s BILTEN TM dated 09.09.2019.
(Affidavit under Section 65 B of the Indian
Evidence Act filed and recorded)
Ex.D7 The online printout of purchase order issued by the
defendant for the manufacture of Belastine
Pharmaceutical preparation dated 12.09.2019.
(Affidavit under Section 65 B of the Indian
Evidence Act filed and recorded)
Ex.D8 The photocopy of the license issued for the
manufacture of Defendant’s Belastine
Pharmaceutical preparation dated 16.10.2019.
(Subject to proof and relevancy)
Ex.D9 The original 1st invoice evidencing the use if TM
BELATIN by the Defendant in respect of Belastine
Pharmaceutical preparation dated 31.10.2019.
Ex.D10 The online printout of reply to examination report
addressed by the defendant in respect of BELATIN
TM Application dated 12.12.2019. (Affidavit under
Section 65 B of the Indian Evidence Act filed and
recorded)
Ex.D11 The original sales turnover and Promotional
expenses from February 2020 to August 2020 in
respect of Defendant’s BELATIN product range
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C.S.(Comm.Div.) No.232 of 2020
Exhibits Documents
dated 04.09.2020.
Ex.D12 The online printout of Moving Annual Turnover
(MAT) of BELATIN and BELTIN products for the
period October 2019 – September 2020 issued by
IQVIA dated 24.11.2020. (Affidavit under Section 65
B of the Indian Evidence Act filed and recorded)
23.01.2025
kal
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C.S.(Comm.Div.) No.232 of 2020
SENTHILKUMAR RAMAMOORTHY J.
kal
Pre-delivery judgment in
C.S.(Comm.Div.) No.232 of 2020
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