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High Court of Judicature at Bombay
D.D. SINHA & V.K. TAHILRAMANI
Medical Technologies Limited
Versus
Neon Laboratories Limited & Others
WRIT PETITION NO.2669 OF 2011
Decided On : 03-04-2012
TRADEMARK - RECTIFICATION - SECTION 47, 57 - COMMON LAW RIGHTS - REGISTRATION - USER - INFRINGEMENT - PASSING OFF - [MEDICAL TECHNOLOGIES LTD. V. ROFOL LABORATORIES LTD.]
Fact of the Case:
The petitioner, Medical Technologies Ltd., filed a rectification application under sections 47, 57, and 127 of the Trade Marks Act, 1999, seeking expunction of the entry made in the Register of Trade Marks of the trade mark “ROFOL” registered in the name of the respondent, Rofol Laboratories Ltd. The petitioner claimed proprietorship of the mark “PROFOL” based on prior use since April 1998. The respondent filed a counterstatement and the petitioner filed a reply. The Intellectual Property Appellate Board (IPAB) dismissed the rectification application and the petitioner's clarificatory application seeking review of the order. The petitioner filed a writ petition under Articles 226 and 227 of the Constitution of India challenging the IPAB orders.
Finding of the Court:
The court held that: * The petitioner, as a person aggrieved, had locus standi to file the rectification application. * The petitioner failed to prove that the respondent had not used the mark “ROFOL” for a continuous period of at least five years and one month prior to the date of the application, as required under section 47(1) of the Act. * The petitioner failed to prove that the respondent obtained the registration of the mark “ROFOL” without any bona fide intention to use it, as required under section 47(1)(a) of the Act. * The petitioner failed to prove that the entry of the mark “ROFOL” in the register was made without sufficient cause or that it was wrongly remaining on the register, as required under section 57(2) of the Act.
Issues: 1. Whether the petitioner had locus standi to file the rectification application? 2. Whether the petitioner proved that the respondent had not used the mark “ROFOL” for a continuous period of at least five years and one month prior to the date of the application? 3. Whether the petitioner proved that the respondent obtained the registration of the mark “ROFOL” without any bona fide intention to use it? 4. Whether the petitioner proved that the entry of the mark “ROFOL” in the register was made without sufficient cause or that it was wrongly remaining on the register?
Ratio Decidendi: 1. The court held that the petitioner had locus standi to file the rectification application because the petitioner was a person aggrieved within the meaning of section 47 of the Act. 2. The court held that the petitioner failed to prove that the respondent had not used the mark “ROFOL” for a continuous period of at least five years and one month prior to the date of the application, as required under section 47(1) of the Act. 3. The court held that the petitioner failed to prove that the respondent obtained the registration of the mark “ROFOL” without any bona fide intention to use it, as required under section 47(1)(a) of the Act. 4. The court held that the petitioner failed to prove that the entry of the mark “ROFOL” in the register was made without sufficient cause or that it was wrongly remaining on the register, as required under section 57(2) of the Act.
Final Decision: The court dismissed the writ petition, upholding the orders of the IPAB.
D.D. Sinha, J.
Heard Mr.Dwarkadas, the learned Senior Advocate for the petitioner and Mr.Tulzapurkar, the learned Senior Advocate for the respondent no.1.
2. This Writ Petition is directed against the order dated 29.5.2009 passed by the Intellectual Property Appellate Board (for short “IPAB”) whereby the petitioner’s rectification application seeking expunction of entry made in the Register of Trade Marks of the trade mark “ROFOL” registered in the name of the respondent no.1 came to be dismissed. Similarly, the order dated 10.8.2010 passed by the IPAB whereby the petitioner’s clarificatory application seeking review of the order dated 29.5.2009 came to be dismissed.
3. The facts which have given rise to the filing of the present petition are as follows:-
(i) The Respondent no.1 made an application for registration of the trade mark “ROFOL” on 19.10.1992. The said trade mark was registered with effect from 19.10.1992. The respondent no.1 started using the mark “ROFOL” with effect from 16.10.2004.
(ii) The petitioner filed a civil suit for passing off before the City Civil Court, Ahmadabad, on 19.7.2005 on the basis that the mark “ROFOL” used by the respondent no.1 is deceptively similar to the mark “PROFOL” used by the petitioner. The petitioner has claimed use of the mark “PROFOL” since April 1998.
(iii) The petitioner has claimed proprietorship of the mark “PROFOL” on the basis that they are the first user of the mark “PROFOL”. The respondent no.1 has also filed a suit before this Court on the basis that the mark “PROFOL” used by the petitioner is deceptively similar to the mark “ROFOL” registered in the name of the respondent no.1.
(iv) It is the stand of the petitioner that its predecessor made an application for registration of mark “PROFOL” in class 05 of Fourth Schedule to the Trade Marks Rules, 2002, vide application no.803692 and the same is still pending. The respondent no.1 has filed an opposition to the said application of the petitioner. The mark “PROFOL” has not been registered.
(v) The petitioner obtained an ex parte order against the respondent no.1 on 20.7.2005 in Suit No.1244 of 2005 filed before the City Civil Court, Ahmadabad. On 17.10.2005 the said ex parte order is confirmed by the City Civil Court, the respondent no.1 is injected from using the mark “ROFOL”. The respondent no.1 filed an appeal against the order dated 17.10.2005 which came to be dismissed by the Gujarat High Court vide order dated 19.12.2005. The respondent no.1 challenged the order of the Gujarat High Court dated 19.12.2005 before the Hon’ble Supreme Court by filing Special Leave Petition on 16.1.2006. The same was admitted by the Apex Court on 30.1.2006. The said order of the Apex Court reads thus:-
ORDER
“Special Leave granted. No interim order except that the respondents shall maintain accounts. Liberty to mention for early date of hearing. We make it clear that so far as the parties are concerned, whatever rights they have in law may be urged in proceedings pending before the other Courts.”
(vi) The petitioner on 25.2.2006 filed rectification application under sections 47, 57 and 127 of the Trade Marks Act, 1999 (hereinafter referred to as the “Act”). The respondent no.1 filed its counter statement to the rectification application on 17.6.2006. On 7.5.2008 the petitioner filed its reply to the counter statement of the respondent no.1. Rectification application was dismissed by the IPAB vide order dated 29.5.2009 and the clarificatory application of the petitioner seeking review of the said order also came to be dismissed by the IPAB vide order dated 10.8.2010. The petitioner being aggrieved has filed the present Writ Petition under Articles 226 and 227 of the Constitution of India for setting aside the said orders passed by the IPAB.
4. Mr.Dwarkadas, the learned Senior Advocate appearing for the petitioner, has contended that the petitioner acquired the right in the trade mark by virtue of: (i) its use in relation to vend
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