Neon Laboratories Ltd. v. Medical Technologies Ltd. and Ors.
2015 (64) PTC 225 (SC)
- Respondents through their predecessors in interest were using the mark ‘Profol’ in India since 1998 for pharmaceutical product.
- In 2005, Respondents came to know that the Defendant have launched a drug called ‘ROFOL’ for identical product.
- Respondents filed a suit for passing off against the Appellant.
- The Trial Court granted a temporary injunction in favour of the Respondents on account of prior use of the mark ‘PROFOL’. The same was confirmed by the High Court. Against the order of the Single Judge of the Hon’ble High Court of Gujarat, the present appeal was filed.
- The Appellant is the registered proprietor of the trade mark since 1992 of the mark ‘ROFOL’, when the Respondents were not even in the market and a user since 2004.
Whether the prior registration would have the effect of obliterating the significance of the goodwill that had meanwhile been established by the Respondents? Would a deeming provision i.e. relating registration retrospectively prevail on prior user?
- This Court does not normally entertain appeals against interlocutory orders. In the case of trademarks, however, keeping in perspective the endemic delay in concluding cases/suits in India because of the exponentially increasing docket explosion, temporary ad interim injunctions are of far reaching consequences, often times effectively deciding the lis and the disputes themselves.
- The Hon’ble Court relied on Section 34 of the Trade Marks Act, 1999 which protects a prior user and observed as follows:
‘….A proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor. This “first user” rule is a seminal part of the Act…’.
- Section 47of the Act is in the same vein as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trademark was registered, there was no bona fide use thereof. The legislative intent behind this Section was to ordain that an applicant of a trademark does not have a permanent right by virtue of its application alone. Such a right is lost if it is not exercised within a reasonable time.
- Respondents have prima facie supported with proof, that they had already been using their trademark well before the attempted user of an identical or closely similar trademark by the Appellant, the former would be entitled to a temporary injunction, in light of the ‘first in the market’ test.