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1999 Supreme(MP) 175
High Court Of Madhya Pradesh
B. A. KHAN, SHAMBHOO SINGH
HIMALAYA DRUG CO.PVT.LIMITED, BANGALORE - Appellant
Versus
ARYA AUSHADHI PHARMACEUTICAL WORKS, INDORE - Respondents
L. P. A. 2 Of 1994
Decided On : 02/19/1999
P.B.S.NAYAR, S.K.GARG
Only a registered proprietor or a registered user of a Trade Mark can initiate proceedings to prevent infringement of such Trade Mark.
Headnote:
TRADE AND MERCHANDISE MARKS ACT, 1958 - REGISTERED USER - SECTION 48, 49, 51, 52 - SUMMARY: A registered user of a Trade Mark can only initiate proceedings to prevent infringement of such Trade Mark after the registered proprietor neglects or refuses to do so within three months of being called upon. An unregistered user is not entitled to file a suit for infringement.
Fact of the Case:
Appellant, a manufacturer of pharmaceutical preparations, filed a suit against the respondent for infringement of the Trade Mark 'peptilin'. Appellant claimed that it was a registered user of the Trade Mark 'saptlin' and 'septilin' by virtue of registered user agreements with the proprietor, Himalaya Drug Co. Respondent resisted the suit on various grounds, including the appellant's failure to register the user agreements with the Registrar of Trade Marks.
Finding of the Court:
The trial court found in favor of the appellant and decreed the suit. However, the First Appellate Court reversed the trial court's decision, holding that the appellant had failed to prove that it was a registered user of the Trade Mark.
Issues: Whether the appellant was a registered user of the Trade Mark 'saptlin' and 'septilin'.
Ratio Decidendi: The court held that the appellant was not a registered user of the Trade Mark 'saptlin' and 'septilin' because it had failed to register the user agreements with the Registrar of Trade Marks as required by Section 49 of the Trade and Merchandise Marks Act, 1958. The court further held that an unregistered user is not entitled to file a suit for infringement of a Trade Mark under Section 51 of the Act.
Final Decision: The court dismissed the appeal, affirming the judgment of the First Appellate Court.
( 1 ) APPELLANT is a manufacturer of pharmaceutical preparations, drugs and chemicals. So is the respondent. Both are fighting it out on a Trade Mark for the last twenty five years or so.
( 2 ) APPELLANT claims that it was given right to use Trade Mark of 'saptlin' and 'septilin', a medicine used for treating tonsillitis and other respiratory disorders by its licensors M/s. Himalaya Drug Co. vide registered user agreements dated 29-6-1971 and 9-6-1972. It learnt somewhere in 1973 that respondent had also launched a preparation called 'peptilin' which was used to cure peptic ulcer and other connected diseases. A notice was accordingly issued to it to desist from doing so and on its failure C. O. S. No. 1-A was filed for perpetual injunction restraining it from using Trade Mark 'peptilin' and for other incidental damages and destruction of all material etc. The suit was resisted by respondent on various grounds leading to framing of a number of issues of which only issue No. 1 (c) which is material for our purposes is reproduced hereunder:-"have the agreements of registered users been registered with Registrar of Trade Marks and the plaintiffs are named as registered users of the said Himalaya Drug Company in the records of Registrar of Trade Marks. "
( 3 ) THE trial Court decided this issue in favour of appellant and decreed the company's suit. But respondent filed F. A. No. 81/78 assailing the trial Court finding on the issue as being unsupported by evidence. It found favour with First Appellate Court and the crucial issue was found to have been decided without any evidence. The suit was accordingly dismissed. Appellant has filed this L. P. A. now assailing the judgment passed by the First Appellate Court and all that remained to be seen was whether the finding recorded by trial Court could be said to be perverse.
( 4 ) BEFORE embarking on an appraisal of evidence on record it becomes necessary to refer to some relevant provisions of the Trade and Merchandise Marks Act, 1958 to know the requirements for filing such a suit. Section 2 (q) (r) (s) defines "registered proprietor," "registered Trade Mark" and "registered user" respectively. "registered proprietor" is a person who is entered in a register as a proprietor of the Trade Mark. "registered Trade Mark" is a Trade Mark which is actually entered on the register. "registered user" means a person who is for the time being registered u/s. 49. Section 48 of the Act deals with the registered users and Section 49 with the procedure for obtaining such registration by the registered users. It envisages that both registered proprietor and registered user shall make a joint application to the Registrar in writing and in prescribed manner for such registration.
( 5 ) CHAPTER IV of the Act deals with effect of registration and Section 28 thereunder postulates that such registration shall give the registered proprietor of the Trade Mark exclusive right to the use of such Trade Mark and to obtain relief in respect of infringement of the Trade Mark in the manner provided by this Act. Section 52 makes an exception to this and permits the registered user of the Trade Mark also to take proceedings to prevent infringement of such Trade Mark on satisfying the requirements laid down therein. The relevant section which assumes crucial importance in the matter is extracted hereunder:-"a bare perusal of the provision would show that the registered user of the Trade Mark shall be entitled to call upon the proprietor of such Trade Mark to take proceedings to prevent infringement thereof and if such registered proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant. "
( 6 ) GOING by the relevant provisions of the Act, it is firstly proprietor of a Trade Mark who can maintain a suit for infringement of such Trade Mar
