The court held that while both parties have registered trademarks, the evidence does not substantiate exclusive rights to either mark as both were deemed to not have been adopted bona fide.

JUDGMENT :

(Judgment of the Court was delivered by K.Kumaresh Babu J.)

The present Original Side Appeal has been filed against the order dated 10.02.2023 passed by the learned single judge in C.S.No.651 of 2008, on the file of this court, whereby the learned single judge had dismissed the said suit.

2. The appellant company which was promoted by one Dr.J.R.Krishnamoorthy, formulated the Siddha medical oil for the treatment of Psoriasis. The said formulation was developed in association with the National Research Development Corporation (NRDC). The appellant company had marketed the said product under the brand name “777 Oil”, which was registered as the Trade Mark under the Trade Mark Registration No.1061418 in class 5, dated 20.11.2001.Its further claimed that the promoter of the appellant company had been using the mark “777 Oil” since the year of 1992, much prior to the registration.

3. When it came to the knowledge that the respondent company which operates in the similar line of trade, had adopted and registered an identical and a deceptively similar trade mark, namely “SANJEEVI 777 OIL”, registered as trade mark under the Trade Mark Registration No.1167605 ( Form TM-1) Class 5 dated 20.01.2003, the appellant had initiated appropriate proceedings. The appellant had approached the Intellectual Property Appellate Board (herein after referred to as IPAB) and challenged the respondent’s trade mark registration. The IPAB vide its order dated 16.08.2011, held that the respondent had no documents to substantiate their bonafide use of the trade mark. Especially no drug license with a list of drugs for which the license was issued was produced as required under the provisions of the Drugs and Cosmetics Act,1940. Therefore the IPAB vide its order supra had allowed the rectification and ordered for the removal of the respondent’s trade mark “SANJEEVI 777 OIL” from the Register of Trade Marks.

4. Aggreived by the same the respondent had approached this court challenging the IPAB order (supra) in W.P.No.20195 of 2011, which also came to be dismissed vide order dated 17.08.2011, thereby confirming the IPAB order and no further appeal was preferred by the respondent against the said order. The appellant company had further instituted a civil suit in C.S.No. 651 of 2008 before this court, inter alia, seeking permanent injunction against the respondent and restraining them from using the infringed trade mark. This court after hearing both sides had framed the following issues;

i) Whether the plaintiff is the proprietor of the trademark 777 OIL and whether they have the right to restrain the defendant from using 777 in their trademark ?

ii) Whether the expression 777 oil publici juris in Siddha medicine ?

iii)Whether the defendant had registered and used the trademark SANJEEVI 777 OIL since 1993 and whether they have the right to continue to use the trade mark SANJEEVI 777 OIL ?

iv) Whether the Suit is liable to be dismissed on the ground of delay and latches ?

v) Whether the defendant had infringed the trademark of the plaintiff?

vi) To what reliefs is the plaintiff entitled to vii) To what other reliefs ?

5. It was contended the appellant company had formulated the Siddha Medicinal Oil for the treatment of Psoriasis, which was developed in association with the NRDC. The product was named as “777 Oil” by its promotor Dr.J.K.Krishnamoorthy who was using the trademark since 1992. It was submitted that the NRDC and the Appellant company entered into a license agreement dated 19.11.1990, wherein the NRDC acted as the licensor, having acquired the full ownership of the KNOW