Meenu Maheswary and Omesh Puri of Lex Orbis explain why the use of a mark is key in establishing and retaining a proprietor’s rights
India’s trademark regime is evolving day by day as the Intellectual Property Appellate Board (IPAB), various high courts and the Supreme Court of India contribute to the trademarks jurisprudence. Their decisions lay down legal principles in the Indian context and analyse fundamental questions surrounding descriptiveness, non-distinctiveness, the extent of use, well known nature of a mark, the concept of confusion/deception, dilution of a mark, etc. The number of trademark infringement suits has increased tremendously over the past few years.
Unlike patents or designs, the law of trademarks mandates the rule of use – the more you use a mark and make it distinctive, the better your chances of securing and ultimately protecting your trademark rights. Recent examples of decisions that dealt with the “user mandate” of a mark are discussed briefly below.
High court case
Delhi High Court in Allegran Inc v Intas Pharmaceuticals dismissed a suit for infringement. The plaintiff, Allegran, is the owner of the trademarks Botox and BTX-A. The dispute was over the defendant’s use of the trademark BTX-A. The product in question of both the parties is a drug used for treatment of neurological disorders and muscle dystonias. The issue was whether a registered proprietor of a trademark holds the rights in the trademark despite non-use of the mark in respect of goods for which it is registered.
The court observed that the object of the Trade Marks Act is to protect the proprietary rights of a registered trademark holder but not to facilitate any undue monopoly of such registered proprietor despite the proprietor’s non-use of the trademark 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 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 attributable to the registered proprietor and not on account of external factors beyond the proprietor’s control.
The court held that there was no mention of any “special circumstances” by the plaintiff for the non-use of the mark in India and further held that once there is non-user of the trademark for a long period, the entitlement to claim relief on the ground of registration does not exist.
The “user mandate” was further affirmed in two original rectification applications: M/s HAB Pharmaceuticals & Research Limited v Vee Excel Drugs & Pharmaceuticals Pvt Ltd, filed in 2005, and Vee Excel Drugs & Pharmaceuticals Pvt Ltd v M/s HAB Pharmaceuticals & Research Limited, filed in 2009. The IPAB issued an order in respect of these cross-rectification applications this year.
The 2005 application was filed by HAB Pharmaceuticals to remove the mark Vega Asia belonging to Vee Excel Drugs from the register. The 2009 application was initiated by Vee Excel Drugs to remove the mark Vegah Tablets of HAB Pharmaceuticals from the register.
The IPAB decided that in terms of the mark Vega, as opposed to Vega Asia, HAB Pharmaceuticals was able to prove usage for its mark Vega from 2001 as it first manufactured its tablet under the trademark on 17 August 2001. Vee Excel Drugs filed the mark Vega Asia on 8 February 2002 as a “proposed to use” application. The drug licence was obtained on 12 September 2002.
The IPAB held that true use of the mark Vega Asia could only have taken place once the drugs were sold. Accordingly the prior user, being HAB Pharmaceuticals, had a better right and thus the removal of the mark Vega Asia was ordered.
However, regarding the 2009 application, HAB Pharmaceuticals was unable to prove usage of the mark Vegah Tablets. The application was filed on 24 April 2002 with a user date of 1 April 2002. The usage could not be proved by way of the documents. The removal of the registration for the mark Vegah Tablets was accordingly ordered.
India has a robust legal structure and a practical judiciary which has been enforcing trademark rights in an advanced and creative manner. Registration is not necessary to enforce rights and therefore continuous use of the mark becomes the major tool for brand owners to safeguard their marks from infringement and passing off.
Meenu Maheswary is a trademark attorney and Omesh Puri is a senior associate at Lex Orbis IP Practice.