Injunction against infringement – Delay of 10 years by the trademark office in amending records results in Plaintiff losing it’s locus standi.
Appellant – Orchid Chemicals & Pharmaceuticals Limited
Respondent – Wockhardt Limited
Trademarks in dispute – METO vs. METOX
Court – Madras High Court
Coram – Honourable Justice M. Jaichandren and Honourable Justice M. M. Sundresh
The appellant is a company incorporated under the Companies Act in the year 1992. M/s Mano Pharmaceuticals Private Limited is a Division of the appellant’s company for which an agreement was entered into by the two companies, in 2003. Subsequently, M/s Mano Pharmaceuticals Private Limited had filed an application under the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) for registration of trade mark ‘METO’. A request on Form TM-16 was filed to amend the name of the applicant to ‘M/s Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited)’ on 24.02.2003. Without taking the request on TM-16 on record the trademark office issued the registration certificate on 24/02/2005 in the name ‘M/s Mano Pharmaceuticals Private Limited’.
The respondent/defendant had adopted the trade mark ‘METOX’. Both the products of the appellant and the respondent are pharmaceutical products meant for the same ailment. The appellant Company issued a notice to restrain the respondents from using the mark ‘METOX’ on 05.04.2011 on the grounds that it is deceptively similar to the trade mark ‘METO’.
Thereafter, a suit for infringement was filed by the appellants in the month of January, 2012. Pending suit, a Legal Use Certificate was issued reflecting the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on 07.02.2012.
The learned Single Judge dismissed the injunction application on the ground that the procedure laid down under the Act for Assignment of trade mark was not fulfilled by the appellants and M/s Mano Pharma. Further the learned Judge went on to say that the two marks are not phonetically, visually or structurally similar and that the word ‘METO’ has been derived from the chemical component “Metoprolol” and therefore, it is “publici juris” and generic. Accordingly, the learned single Judge, both on facts and on law, had dismissed the application filed for injunction.
Challenging the same, the present Original Side Appeal has been filed.
- Can the trademark, ‘METO’, be said to be assigned to the appellants?
- Whether the respondent’s mark is deceptively similar to that of the appellant’s mark?
- Whether the appellant’s have “exclusive” right over the trademark ‘METO’ under section 28 of the Act?
- Whether there has been an infringement of the appellant’s mark under section 29 of the Act?
The learned Senior Counsel submitted that in view of the express provision contained under Section 29 of the Trade Marks Act, 1999, the appellant is entitled for an order of injunction.
The learned Counsel further said that since the respondent’s have applied for registration, they cannot raise a plea “Publici Juris”. The learned Counsel also contended that the appellant’s have exclusive right over the trade mark u/s 28 of the Trademark Act, 1999 for which he placed reliance on the TM-16, filed on 17.03.2003, and the Legal Use Certificate, which was issued on 07.02.2012, which reflects the name Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited).
Hence, the learned Senior Counsel submitted that the appellant is entitled for an order of injunction.
The learned Senior Counsel submitted that the suit is not maintainable on the ground that at the time of filing the suit, the Registration Certificate stood in the name of M/s Mano Pharmaceuticals Private Limited only.
The appellant’s cannot claim infringement of their trademark as they do not have an “exclusive” rights u/s 28 of the said Act and Section 29 of the Trade Marks Act, 1999, is subject to Section 28 of the Act.
The learned Counsel further contended that that there are number of companies having the prefix ‘METO’. It is the common name of the chemical component, as the name is “Publici Juris”, and hence, an order of injunction cannot be granted.
The learned Counsel further said that there is no explanation for the delay of about 32 months in moving the Court since the appellant became aware of the alleged infringement. Since an order of injunction is discretionary, unless prima facie case, balance of convenience and irreparable loss are shown, this Court normally cannot grant it.
Hence, the learned Senior Counsel submitted that the appeal will have to be dismissed.
The appeal was dismissed by this Honourable High Court after scrutinising the facts of the case and by interpreting Sections 28, 29 and 30 of the Trademark Act, 1999.
The main grounds on which the appeal was dismissed are summarised below;
- Locus Standi- It is seen that TM-16 was filed to record the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on 17.03.2003. However, the registration certificate was filed only in the name of M/s Mano Pharmaceuticals Limited on 24.02.2005. Subsequently, the suit was filed by Orchid Chemicals and Pharmaceuticals Limited in the month of January, 2012. Thereafter, on 07.02.2012, the Legal Use Certificate was issued reflecting the name of Mano Pharma (A Division of Orchid Chemicals and Pharmaceuticals Limited). Thus, the appellants do not have Locus Standi. Further, the appellant had not registered the Assignment Deed required under the Act. Under the Trade Marks Act, 1999, a separate mandatory proceeding is contemplated for the above said purpose. If the appellant was desirous of using the trade mark of M/s Mano Pharmaceutical Limited, it ought to have filed an appropriate application along with M/s Mano Pharmaceutical Limited. Had there been a proper assignment agreement between the appellants and Mano Pharma Ltd., the appellants would have had Locus Standi to file a suit for infringement, but, since there is no proper assignment of the trademark, as contemplated under the Act, to the appellants, the appellants have no Locus Standi to file a suit for infringement of the trademark ‘METO’ since the procedure of assignment is a mandatory one under the Act.
- The Court further held in pharmaceutical industries, the usage of generic terms is common and is also unavoidable, due to the fact that every product is a derivative or species of a generic term. Thus, METO is also generic in nature and is Publici Juris as the common prefix METO is derived from the molecule drug “Metroprolol succinate” and suffix ‘X’ in the trade mark ‘METOX’ makes both marks distinct and phonetically, visually and structurally dissimilar;
- Further, the Court held that since both ‘METO’ and ‘METOX’ fall under scheduled “H” drugs, both the goods are to be handled under due prescription given by trained physician, hence both buyers and users will not be misguided or confused;
- Based on the below mentioned provisions, the Court held that the respondent has not infringed the said word ‘METO’ as it is derived from the chemical component “METOPROLAL”, which is “Publici Juris”, and also, as it is already in the public domain, even much prior to the application of the appellant. Further, when the facts are read with Section 29, the limits on effect of the registered trade mark under Section 30 of the Trade Marks Act, 1999, would apply with all force, therefore the exclusive right claimed by the appellant in pursuant to the registration is no longer be available, in view of the fact that the word ‘METO’ is already “Publici Juris”, thereby, giving protection under Section 30 of the Act. When Section 28 of the Act is not applicable, then consequently, Section 29 of the Act also is not applicable. Even otherwise, Section 29 of the Act is subject to Section 30 of the Act. As Section 28 of the Act is also subject to other provisions, it is needless to state that it is also subject to Section 30 of the Act. Therefore, looking from any angle, the Court had no hesitation in holding that there is no infringement of the appellant’s trade mark under Section 29 of the Trade Marks Act, 1999.
The relevant sections of the Act, interpreted by the Court, are;
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 the use of the trade mark in relation to t e 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 by this Act.
(2) The exclusive right to the use of a trade mark given under sub- section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not 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 except so far as their respective rights are subject to any against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
29. Infringement of registered trademarks.-
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of…………………….
30. Limits on effect of registered trade mark.-
(1) nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-………….”
Thus, the Court, by way of interpretation of Sections 28, 29 and 30, held that the appellant did not have an “exclusive” right over the Trademark ‘METO’ under Section 28 of the Act and that the respondent’s have not infringed the said mark u/s 29 of the Act.
Lastly, the plaintiff had not made out any case in their favour either on the question of Locus Standi to maintain the present action and on facts and is hence not entitled for a grant of injunction to restrain the defendants from using the mark. The Original Side Appeal fails and is dismissed.
A name derived from a common chemical component, which is a generic name and is Publici Juris, is said to be dissimilar to other such names derived from the same chemical component.
Prefixes and suffixes to a chemical component are allowed under the law and the same would not amount to infringement of another person’s trademark derived from the same chemical component.
The appellant has no locus standi to file the present suit as the request for amending the proprietor name to bring itself as the proprietor of the trademark filed as early as 2003 was pending recordal with the trademark office. The appellant was penalised for the delay caused by the trademark office.