Non-use of a registered trademark for a long period of time can result in the loss of rights to claim reliefs based on registration.

VALMIKI J. MEHTA, J.

1. The subject suit has been filed by the plaintiffs claiming reliefs of injunction, damages etc with respect to the plaintiff No.1’s registered trademarks BOTOX and BTX-A. The trademark BTX-A was registered during the pendency of the suit, pursuant to which the plaint was amended and the relief of infringement etc was claimed on the ground of registration of trademark BTX-A. As is being mentioned later, the defendant lays no claim to the trademark ‘BOTOX’ and the dispute survives only qua the trademark BTX-A used by the defendant. The product in question of both the parties is a pharmaceutical product used for therapeutic treatment of neurological disorders and muscle dystonias. This product is in injection form.

2. The suit is being disposed of on the principles of Order 12 Rule 6 of Code of Civil Procedure, 1908 (CPC) as only the admitted position in the plaint is being considered. There is no requirement of framing issues on trial in view of the limited and admitted nature of controversy.

3. Counsel for the plaintiffs does not dispute that the trademark BTX-A was registered on 10.2.2005 w.e.f 5.6.2002. The application for registration was filed in June, 2002. Counsel for the plaintiffs also does not dispute that since the year 2002 till date i.e for over 10 years the plaintiffs have not sold their goods being injections under the trademark BTX-A in India. The amended plaint makes no reference to sale of goods in India under the mark BTX-A. Counsel for the plaintiffs agrees that the only issue to be decided in this case is that whether the plaintiff No.1 is entitled to reliefs on the ground of existing registration of the plaintiff No.1 with respect to trademark BTX-A, and which registration continues to be valid.

4. The issue as to whether a person who is a registered owner of the trademark can continue to have rights in the trademark although goods are not sold under that registered trademark has been dealt with by the two Division Bench judgments of this Court. These two judgments are in the cases of Fedders Lloyd Corporation Ltd. & Anr. Vs. Fedders Corporation & Anr., 119 (2005) DLT 410 and Virumal Praveen Kumar vs. Needle Industries (India) Ltd. & Anr., 2001 (93) DLT 600.

5. In Fedders Lloyd Corporation Ltd.(supra), the Division Bench has observed the following in para 23:-

“23. Though the object of the Trade Marks Act is to protect the proprietary rights of a registered trademark holder, at the same time the object is not to facilitate any monopoly of such registered trade mark holder, despite non use of the trademark by him as contemplated by the Act. A trademark has no meaning, even if it is registered, unless it is used in relation to goods and/or services. A Trademark which drops out of the use, dies when there are no goods offered for sale as there is no use of the trademark. The mark can lose its distinctiveness by non use, where non use is on the part of registered trade mark holder but not on account of external factors beyond the control of such registered trade mark holder.”

6. A reference to the aforesaid para shows that though registration of the trademark is intended to confer ownership rights qua the trademark which is registered, however, the object is not to facilitate any monopoly of such registered trademark holder despite non-use of the trademark. The Division Bench has also observed that a trademark has no meaning, even if it is registered, unless, it is used in relation to goods and services. The Division Bench has categorically observed that the trademark which drops out of the use dies when there are no goods under the trademark available for sale.

7. In the case of Virumal Praveen Kumar (supra), the Division Bench has made similar observations in paragraphs 24, 25, 26 and 29 which read as under:-

“24. In view of the aforesaid factual position what has to be considered is whether the factum of the registration of the trademark in the name of appellant is sufficient to grant