Prior use of a registered trademark grants exclusive rights, and honest concurrent use is not a defense in trademark infringement unless registered.

JUDGMENT :

(SENTHILKUMAR RAMAMOORTHY, J.)

The plaintiff is the registered proprietor of the trademark BILTEN under trade mark No.4246358 in Class 5. By this suit, the plaintiff seeks to restrain the defendant from infringing its registered trademark by using the trademark BELATIN or any other trademark deceptively similar to the plaintiff's registered trademark and from passing off its products under the trademark BELATIN as the plaintiff's products. In addition, the plaintiff seeks the surrender of infringing material, rendition of accounts and a decree for profits in terms thereof.

The Pleadings

2. In the plaint, the plaintiff asserts that it adopted the trademark BILTEN in or about June 2019, and applied for registration on 25.07.2019 in class 5 for medicinal and pharmaceutical preparations. The plaintiff further states therein that the product contains BILASTINE, as the main ingredient, and consequently is used as an antihistamine. Significantly, it is stated that the product was launched in the market in November 2019 after obtaining the drug licence on 15.10.2019. The monthly sales turnover for November 2019 through July 2020 is set out in paragraph 6 thereof. After stating that the use of the trademark BELATIN by the defendant for antihistamine tablets was noticed in August 2020, the plaintiff asserts in paragraph 10 that it is the prior user. Because the trademarks are deceptively similar, the plaintiff asserts that it is entitled to the reliefs claimed as the prior user of a registered trademark. The defendant filed a written statement in response to the plaint.

3. In the written statement, the defendant asserts that it conceived of and adopted the trademark BELATIN in May 2019 and applied for registration on 22.06.2019. By contrast, it was stated therein that the plaintiff applied for registration of the trademark BILTEN on 25.07.2019. The defendant further stated that trademarks in the pharmaceutical field are often coined on the basis of the ailment, ingredient or targeted organ of the body. Consequently, it is asserted that there can be no objection to the adoption and use of the trademark BELATIN in respect of a BELASTINE preparation.

4. In paragraph 10 of the written statement, the defendant expressly asserted that it conceived and adopted the trademark honestly, and that a search of the register of trademarks was conducted before applying for registration. After setting out the monthly sales turnover and monthly promotional expenses for February 2020 to August 2020 in paragraphs 12 and 13 respectively, at paragraph 16, the defendant asserted that its use of the trademark was honest and concurrent, and that the plaintiff acquiesced in such use. By further asserting that it suffered losses due to the institution of the suit and the ex parte order obtained therein, the defendant made a counter claim for Rs.50,00,000/-.

5. The plaintiff filed a written statement in response to the counter claim. In that pleading, the defendant's assertion of use since 31.10.2019 or 01.11.2019 was denied by stating that the documents filed by the defendant do not corroborate use from November 2019 and that mere transfer of goods from the manufacturer to the defendant does not qualify as commercial use. The plaintiff further asserted in paragraph 7 that it placed orders to manufacture products bearing the trademark BILTEN in April 2019. The assertion that the plaintiff's application was on “proposed to be used” basis was, therefore, denied. In paragraph 16, the plaintiff denied that the defendant is an honest and concurrent user and that the plaintiff acquiesced in such use. By denying that the goodwill and reputation of the defendant was damaged by the institution of the suit, the counter claim was refuted.

Issues and Evidence

6. Upon completion of pleadings, the following issues were framed:

“(i) Whether the plaintiff is the registered proprietor of the Trademark BILTEN?

(ii) Whether the plaintiff is the prior user of the trademark BILTEN?

(ii