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1985 Supreme(Del) 57
High Court Of Delhi
SANDOZ LIMITED - Appellant
Versus
PHARMACEUTICAL AND CHEMICAL INDUSTRIES - Respondent
First Appeal Order 186 of 1983
Decided On : 01/31/1985
AMAR JOYOTI, D.D.Singh, HEMANT SINGH, PARVIN ANAND, R.K.P.SHANKAR DAS
A decision given by the Registrar rejecting an application for registration of a trademark, if not challenged by filing an appeal under Section 109 of the Trade and Merchandise Marks Act, operates as res judicata in a proceeding under Section 105 of the Act.
Headnote:
TRADEMARK - INFRINGEMENT - INTERIM INJUNCTION - SIMILARITY OF MARKS - RES JUDICATA - DELAY - BALANCE OF CONVENIENCE - TERMS IMPOSED.
Fact of the Case:
Plaintiffs, the registered owners of the trademark "syntocinon", sought an interim injunction to restrain the defendants from marketing their product "synthocilin", alleging deceptive similarity and infringement of their trademark. The defendants had applied for registration of their trademark but were rejected by the Registrar. They filed a second application, which was pending, and also filed a petition for rectification of the plaintiffs' trademark.
Finding of the Court:
The court held that the decision of the Registrar rejecting the defendants' first application for registration of their trademark operated as res judicata, as the defendants did not challenge it by filing an appeal under Section 109 of the Trade and Merchandise Marks Act. The court also noted the defendants' substantial sales and market presence of their product "synthocilin" over several years.
Issues: 1. Whether the decision of the Registrar rejecting the defendants' first application for registration of their trademark operated as res judicata. 2. Whether the plaintiffs were entitled to an interim injunction restraining the defendants from marketing their product "synthocilin". 3. Whether the defendants' delay in seeking interim injunction and the balance of convenience warranted imposing terms instead of granting an injunction.
Ratio Decidendi: 1. The court held that the decision of the Registrar rejecting the defendants' first application for registration of their trademark operated as res judicata, as the defendants did not challenge it by filing an appeal under Section 109 of the Trade and Merchandise Marks Act. The court relied on the Mysore High Court decision in K. R. Chinnakrishna Setty and others v. Sri Ambal and Co., which held that a decision given by the Registrar in such proceedings, if not assailed before the High Court, operates as res judicata in a proceeding under Section 105 of the Act. 2. The court declined to grant an interim injunction restraining the defendants from marketing their product "synthocilin", considering the defendants' substantial sales and market presence of their product over several years, the plaintiffs' delay in seeking interim injunction, and the balance of convenience. 3. The court imposed terms on the defendants to submit three monthly statements of sales of "synthocili" product in the trial court till the disposal of the suit or the decision of the rectification application, duly verified by a Director of the defendants' company or its senior responsible officer.
Final Decision: The appeal was disposed of accordingly, with the defendants directed to submit three monthly statements of sales of "synthocili" product in the trial court till the disposal of the suit or the decision of the rectification application.
( 1 ) THIS appeal arises from an order dated 26-4-1983 of Shri P. S. Sharma, Additional District Judge, Delhi, whereby the issue of the interim injunction against the defendants from marketing the product "synthocilin" was declined. It was, however, directed that the defendants would continue to file copies of their accounts duly authenticated every year till the disposal of the suit with regard to the sale of this product.
( 2 ) BRIEFLY stated the background is that the trade mark "syntocinon" for their medicine used for female harmones was got registered under the Trade Merchandise Marks Act by the plaintiffs on 12-5-1955. It is continuing to be registered as such. The defendents on their part sought for registration of their product synthocilin" an authentic medicinal preparation under the Act on 2-4-1973, claiming that they have been marketing the same from September, 1972. To this registration, the plaintiffs filed opposition. The Registrar after hearing both the sides in a detailed order dated 29-6-1977 rejected this application for registration by the defendants. The defendants did not file any appeal against that order although such right was available under Section 109 of the said Act.
( 3 ) ANOTHER application was moved by the defendants for registration of the same trade name on 1-8-1977. Opposition to that as well was filed by the plaintiffs, and the matter in this regard is still pending before the Registrar.
( 4 ) IN the meanwhile, since the defendants have been marketing their product "synthocilin all over India the plaintiffs served a- notice dated 29-1-1979 on the defendants, requiring them to desist from doing so. On their failure to comply a suit was filed by the plaintiffs in November, 1979, seeking restraint of the defendants from marketing their product under that name. The defendants then moved a petition in that suit that they proposed applying to the High Court for cancellation of the registration of the trade mark in favour of the plaintiffs, and as such the suit had to be stayed to enable the defendants to do so. At that stage, the plaintiffs sought decision on the interim injunction application which though had been filed along with the suit, had not been adjudicated. It was asserted that they stay of the suit did not bar the grant of interim injunction for protection of the registration of the plaintiffs. The product market by the defendants, it was contended, was deceptively similar in name to that of the plaintiffs product "syntocinon", and in this regard reference was made to the earlier order of the Reistrar dated 29-6-1977, in which this deceptive similarity had been recognised. The plaintiffs pleaded that that order of the Registrar had become final as the defendants did not assail the same in the appeal under Section 109 before the High Court. The decision was claimed to operate as resjudicata.
( 5 ) THE defendants on their part pleaded that they could not place the entire material before the Registrar at the time of the consideration of their first application for registration of the trade mark, and as such the same was decided against them. It was next stated that they have collected enough material to justify their claim for registration of the trade mark, and the same is under consideration in the second application, now pending before the Registrar. They also peladed that the interim injunction. sought for now belatedly would gravely harm the financial interest of the defendants as their product has now well come to be recognised in the market and is widely patronised.
( 6 ) THE trial court stayed the suit under section 111 of the Act to enable the respondent to move the High Court for rectification of the registration of the plaintiffs trade mark. A petition in that direction has already been moved, and is pending. The trial court has, however, declined to grant interim injunction in favour of the plaintiffs, restraining the defendants from marketing their medicine
