Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2026 Supreme(Online)(Bom) 3620

HIGH COURT OF BOMBAY
Arif S. Doctor, J
Glaxo Group Limited – Appellant
Versus
Shreya Life Sciences Private Limited – Respondent
Commercial Miscellaneous Petition No. 10 of 2026

Advocates:
For the Petitioners: Hiren Kamod a/w. Bhavya Shah i/b. A & P Partners
For the Respondents: Chintan Bhuva a/w. Siddharth Kurichh i/b. ASG Partners

Prior global user qualifies as 'person aggrieved' under Section 47 for cancelling unused registered mark, as it precludes own registration; 'business expansion' not special circumstances excusing non-use, preventing squatting.

Headnote:(A) Trade Marks Act, 1999 - Section 47(1)(b) - Removal from register on ground of non-use - Registered pharmaceutical mark not used bona fide for over 20 years post-registration - Continuous non-use satisfies requirements for cancellation - "Expansion of business" as reason for non-use does not qualify as "special circumstances in the trade" under Section 47(3), being internal commercial decision voluntarily chosen by proprietor, not industry-wide factor beyond control - Special circumstances must afflict trade generally, not be proprietor-induced or personal. (Paras 30A, 30B, 30C)

(B) Trade Marks Act, 1999 - Section 47 - "Person aggrieved" - Applicant with prior worldwide adoption and use of mark since early 1990s, known to medical practitioners and consumers via spillover reputation, qualifies despite no Indian use or registration - Continued presence of unused mark on register precludes applicant's own registration, causing practical prejudice or likelihood of damage - No need to establish territorial goodwill for rectification on non-use; object is to prevent hoarding of unused marks. (Paras 30E, 30F, 30G)

(C) Trade Marks principles - Mark must be used as source identifier, not hoarded or squatted upon without bona fide intention - Prolonged non-use post-registration evidences lack of intent to use. (Para 30D)

Facts of the case:
Petition for cancellation of registration of pharmaceutical mark under Section 47 on ground of non-use. Petitioner prior adopter with global use since 1991 and international registrations, reputation spilling over into India. Respondent registered mark in 2005 claiming priority from 1973 via predecessor assignment, but admitted no use post-registration citing business expansion; no evidence of any use provided.

Findings of Court:
Impugned registration liable to be removed; non-use established, no special circumstances, petitioner qualifies as person aggrieved; respondent squatted on mark without bona fide use intention.

Issues: Whether petitioner qualifies as "person aggrieved" without Indian use; whether non-use for 20 years proven; whether "expansion of business" constitutes special circumstances excusing non-use; applicability of territoriality and prior global use principles to rectification proceedings.

Ratio Decidendi: Rectification under Section 47(1)(b) succeeds on proof of prolonged non-use without bona fide intent or valid special circumstances; prior global user aggrieved by barrier to own registration; internal decisions not special circumstances; proceedings independent of passing off requirements like territorial goodwill. Result : Petition allowed; registration cancelled in terms of prayers; no costs.

Table of Content
1. cancellation petition under section 47 for non-use. (Para 1)
2. global prior use predates indian registration; respondent never used. (Para 2 , 3 , 4 , 5)
3. preclusion from registration makes petitioner 'person aggrieved'. (Para 6 , 7)
4. business expansion not special circumstance excusing non-use. (Para 8 , 9 , 10 , 11)
5. section 47 locus requires actual indian commercial damage. (Para 12 , 13 , 14 , 15 , 16)
6. 1973 indian registration rights via assignment to respondent. (Para 17 , 18)
7. commercial expansion constitutes special circumstance for non-use. (Para 19 , 20)
8. trademark rights territorial; foreign reputation needs indian spillover. (Para 21 , 22 , 23 , 24 , 25)
9. section 47 rectification needs no indian presence proof. (Para 26 , 27 , 28 , 29)
10. prolonged non-use without trade special circumstances warrants removal. (Para 30)
11. petition allowed; registration ordered cancelled. (Para 31)

JUDGMENT

1. The present Petition has been filed under the provisions of Section 47 of the Trade Marks Act, 1999 (“Trade Marks Act”), seeking cancellation of the registration of the mark ‘PAXIL’ (“the said mark”) granted to Respondent No. 1 under Registration No. 1153709 in Class 5, i.e., pharmaceutical and medicinal preparations (“the impugned registration”).

Submissions on behalf of the Petitioner:

2. Mr. Kamod, Learned Counsel appearing on behalf of the Petitioner has at the outset submitted that the Petitioner is a company that develops a range of medicinal and pharmaceutical products worldwide and is part of the GSK Group of companies, a global pharmaceutical giant.

3. He then pointed out from the list of international registrations appended at Exhibit ‘N’ to the Petition that the Petitioner had started using the said mark in relation to its pharmaceutical products since the year 1991 and had obtained registration of the said mark in various countries. He submitted that the Petitioner’s products under the said mark were known to medical practitioners as well as consumers in India and that the Petitioner had a significant reputation both globally and in India. He then invited my attention to Exhibit ‘R’ to the Petition to point out that a Google search of the word 'PAXIL' generates results of the Petitioner’s medicinal products.

4. Mr. Kamod then pointed out that Respondent No. 1 had applied for registration of the said mark in India on 27^th November 2002, with a user claim of 27^th February 1973. He submitted that the Petitioner became aware of the impugned registration only in or about June 2024, whereupon the Petitioner conducted an investigation into the use of the said mark by Respondent No. 1 only to discover that Respondent No. 1 had never used the said mark. 1 in relation to any of its products, either before or after the impugned registration. He thus submitted that as per Section 47 of the Trade Marks Act, the impugned registration was liable to be removed from the register of trade marks on account of non-use.

5. Mr. Kamod then submitted that the Petitioner was clearly “first in the world market” to use the said mark since the Petitioner’s use of the said mark dated back to the early 1990s, whereas Respondent No. 1 was granted the impugned registration only in the year 2002. He placed reliance upon the decision of the Hon’ble Supreme Court in the case of Milmet Oftho Industries v. Allergen Inc., (2004) 12 SCC 624. to point out that the Petitioner clearly satisfies the test of “first in the world market”, particularly in the context of pharmaceutical products since the Petitioner’s use predates the impugned registration. Mr. Kamod thus submitted that the Petitioner, being the first adopter and user of the said mark on a global scale, was entitled to assert rights in respect of the said mark even in India since the Petitioner’s products reflecting the said mark were known to medical practitioners and consumers in India on account of the Petitioner’s spillover reputation.

6. Basis the above, Mr. Kamod submitted

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2026 Supreme(Online)(Bom) 3620

HIGH COURT OF BOMBAYArif S. Doctor, JGlaxo Group Limited – AppellantVersusShreya Life Sciences Private Limited – RespondentCommercial Miscellaneous Petition No. 10 of 2026

Prior global user qualifies as 'person aggrieved' under Section 47 for cancelling unused registered mark, as it precludes own registration; 'business expansion' not special circumstances excusing non-use, preventing squatting.

Cases Referred (7)

HIGH COURT OF BOMBAY
Arif S. Doctor, J
Glaxo Group Limited – Appellant
Versus
Shreya Life Sciences Private Limited – Respondent
Commercial Miscellaneous Petition No. 10 of 2026