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2012 Supreme(Bom) 720
High Court of Judicature at Bombay
S.J. VAZIFDAR, J.
Neon Laboratories Limited
Versus
Medical Technologies Ltd. & Another
NOTICE OF MOTION NO.4006 OF 2005 IN SUIT NO.3419 OF 2005
Decided on : 31-03-2012
For the Plaintiff:Virag Tulzapurkar, senior counsel with Amit Jamsandekar, Sunil M. Nair i/b Sunil M. Nair, Advocates.
For the Respondents:Janak Dwarkadas, senior counsel with Vinod Bhagat, Aditya Thakkar, Dhiren Karania, Jatin Trivedi i/b G.S. Hegde & V.A. Bhagat, Advocates.
Headnote:Trade Marks Act, 1999 - Sections 18, 27 and 34 - CPC, Order XXXIX, Rule 1 - Injunction against infringement of trade marks. - Plaintiff, a registered proprietor of mark "ROFOL", by virtue of its mark having been registered prior to impugned mark "PROFOL" being used by defendant, entitled to an injunction against infringement of his trade mark.
The plaintiff is the registered proprietor of the mark "PROFOL". The defendant claims to be the proprietor of the mark "PROFOL". The impugned mark "PROFOL" is deceptively similar to the plaintiffs registered mark I "ROFOL". The defendant raised plea that his use of the impugned mark being prior to the use by the plaintiff of its registered mark, the plaintiff is not entitled to maintain successfully, an action for infringement.
The mere fact that the mark was not used until 2004 does not establish, either that the plaintiff abandoned the same or that it never had any intention on the date of the application of using it. A mere delay in the use of a mark does not ipso facto warrant a conclusion to this effect. This is not a case where the registration was renewed mechanically with no intention of ever using it.
The plaintiff, in fact, started using the mark with effect from 16th October, 2004. The non-user of a mark pending registration cannot, at least, normally be held against the proprietor for any reason. It accounts for good business sense for a party to use a mark only after it is registered. The proprietor may understandably not want to run the risk of using the mark if it is ultimately not registered. The reasons are obvious. The use of a mark involves enormous time, effort and expenses.
The proprietor may understandably not want to incur the same unless he is certain that there is no impediment to its registration. This he can be at least reasonably certain of only upon the mark being registered. The submission that the plaintiff intended trafficking in the mark requires merely to be stated to be rejected. The facts establish that the plaintiff always intended using the mark and, in fact, started using the same. There is nothing on record which even remotely suggests that the plaintiff intended trafficking in the mark.
This is an action for infringement and passing off.
2. The plaintiff is the registered proprietor of the mark "ROFOL". The plaintiff claims to be the proprietor of the mark "PROFOL". Its application made on 14th August, 1995, for registration of the mark "PROFOL" is pending. The defendant also claims to be the proprietor of the mark "PROFOL". As a result of the orders passed by the City Civil Court at Ahmedabad and the Gujarat High Court in a suit filed by the respondent on the basis that it is the proprietor of the mark "PROFOL", the plaintiff is restrained from using the mark "ROFOL".
3. This interlocutory application is, therefore, restricted to the claim for infringement of the plaintiff's registered mark "ROFOL" by the defendant's use of the mark "PROFOL". The application, in as far as it relates to passing off must await a modification, if any, of the orders of the Gujarat High Court and the City Civil Court at Ahmedabad and in so far as it is based on the trade mark "PROFOL" it must await the result of the plaintiff's application for the registration thereof.
4. It is common ground that the impugned mark "PROFOL" is deceptively similar to the plaintiffs registered mark "ROFOL". This, indeed, is the basis of the respondent's suit filed in the City Civil Court at Ahmedabad and this suit.
FACTS :
5. On 19th October, 1992, the plaintiff applied for registration of its mark "ROFOL" under class 5. The application was made on the basis of its proposed use of the mark. On 14th August, 1995, the defendants applied for registration of the mark "PROFOL" under class 5 also on the basis of its proposed use of the mark. The defendants started using the impugned mark "PROFOL" from April, 1998. The plaintiffs started using the mark "ROFOL" from about 16th October, 2004, i.e. after the plaintiff's mark was registered. On 14th September, 2001, the plaintiffs application for registration of the mark "ROFOL" was allowed. The registration of the plaintiffs mark is, however, as of the date of the application i.e. 19th October, 1992. On 13th October, 2006, the plaintiff filed an opposition to the defendants application for registration of the impugned mark, which is pending.
6. Mr. Dwarkadas opposed the Notice of Motion on the following grounds:-
I. The action for infringement is not maintainable although the plaintiff's mark was registered prior to the defendant's use of the impugned mark as the plaintiff used its mark only after the defendant's used the impugned mark.
II. The injunction ought to be refused in view of the interim order passed by the City Civil Court at Ahmedabad and the order of the Gujarat High Court confirming the same.
III. The grant of an injunction would render the marks sterile .
IV. The plaintiff had not applied for registration of its mark with the bona-fide intention of using it at the time of making the application or soon thereafter, but solely with the view of trafficking in it.
7. Mr. Dwarkadas submitted that the defendants use of the impugned mark being prior to the use by the plaintiff of its registered mark, the plaintiff is not entitled to maintain successfully, an action for infringement. According to him, the plaintiff's mark having been registered with effect from a date prior to the defendant's use of the impugned mark does not entitle the plaintiff to an injunction against infringement.
8. The main question, therefore, is whether the plaintiff is, by virtue of it's mark having being registered prior to the impugned mark being used by the defendant, entitled to an injunction against infringement although it used it's mark after the defendants started using the impugned mark.
9. The following facts are important in relation to this question.
-19th October, 1992 -The plaintiff's application for registration of the mark "ROFOL" under class 5. This application, though allowed on 14th September, 2001, relates to the date of the application for registration viz. 19th October, 1992.
-April 1998 -The def
