Notice of Motion (L) No. 2178 of 2012. Case: Lupin Ltd Vs Johnson and Johnson. High Court of Bombay (India)
| Case Number | Notice of Motion (L) No. 2178 of 2012 |
| Counsel | For Applicant: Dr. Virendra V. Tulzapurkar, Sr. Advocate, Virag Tulzapurkar, Sr. Advocate; Amit Jamsandekar, Vinay G. Parelkar, Mrs. Alka Parelkar, Ms. Tanvi Kalelkar, Ms. Esha Trivedi, Ms. Neha Naik i/b V. A. Associates, Venkatesh Dhond, Sr. Advocate, Rashmin Khandekar; M. K. Miglani, Vinod Bhagat, Gaurav Miglani, Dhiren Karania, Purit Jain i... |
| Judges | Mohit S. Shah, C.J. and S. J. Kathawalla , J. and N. M. Jamdar , J. |
| Issue | Trade Marks Act (47 of 1999) - Sections 29, 31, 2(1)(w) |
| Citation | AIR 2015 BOM 50 |
| Judgement Date | December 23, 2014 |
| Court | High Court of Bombay (India) |
Judgment:
Mohit S. Shah, C. J.
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This reference has been made to the Full Bench pursuant to the order dated 13 August, 2012 of learned single Judge of this Court (Coram: B. R. Gavai, J.) for considering following question of law:
"Whether the Court can go into the question of the validity of the registration of the plaintiff's trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiff's trade mark in an infringement suit?"
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The learned single Judge felt the need to make this reference in view of two decisions of the Division Benches of this Court, one holding that the Court can not go into the question of validity of registration of a trade mark when such defence is taken by the defendant at an interlocutory stage in a suit for infringement of registered trade mark (judgment dated 16 February, 2005 in M/s. Maxheal Pharma-ceuticles v. Shalina Laboratories Pvt. Ltd. Appeal No. 88 of 2005 in N.M.No. 2663 of 2004 in suit No. 2663 of 2004) and the other decision in which the Court considered the validity of registration when such a defence was raised at an interlocutory stage (J. K. Sons v. Parksons Games and Sports and Anr., 2011 (47) PTC 443 (Bom): (2011 (4) AIR Bom R 317).
The conflict also appears in a series of judgments of this Court on the one hand holding that at an interlocutory stage the Court cannot go into the question of validity of registration of the plaintiff's trade mark when such defence is raised by the defendant in an interlocutory stage and a series of judgments of Delhi High Court on the other hand holding that such a plea can be considered at an interlocutory stage.
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Looking to the length of the judgment, we would like to indicate its broad framework as under:
Para Nos.
P a r t i c u l a r s
3 to 5
Facts.
6
Reasons - ordering reference.
7
Plaintiff's submissions.
8
Defendant's submissions.
9
Plaintiff's rejoinder.
10 to 16
Statutory provisions.
17 to 23
Legislative History.
24 to 43
Discussion.
44 to 54
Case law.
55 to 57
Further discussion.
59
Conclusions.
FACTS
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Before proceeding to consider the rival submissions, we may first set out facts leading to filing of the two suits and the notice of motion giving rise to this reference.
(i) Suit (L) No. 1842 of 2012 has been filed by Lupin Limited, which is a company incorporated under the Companies Act, 1956 and has its registered office in Mumbai. The plaintiff carries on business of manufacturing, marketing and selling pharmaceutical products and claims to be amongst top five in the Indian pharmaceutical market. The plaintiff also claims international presence in almost 70 countries.
(ii) The defendant is a company having its registered office in New Jersey, USA and is also in the business of manufacturing and selling of pharmaceutical products.
(iii) The suit has been filed for infringement in respect of registered trade mark "LUCY-NTA" registered in Class 5 of the Fourth Schedule to the Trade Marks Act with effect from 2012. The plaintiff claims that it had conceived and adopted its mark "LUCYNTA" in or around June 2010 and applied for registration of the same on 20 August, 2010. The plaintiff took official search of the Trade Marks Register in the Trade Marks Registry on 18 October, 2010 and found no conflicting mark on the Register of Trade Marks or pending application.
(iv) On 28 March, 2011, the Examiner of Trade Marks issued an Examination Report that no mark conflicting to the plaintiff's mark was reflected.
(v) On 8 August, 2011, the trade mark was advertised in the Trade Marks Journal and thereafter the trade mark was registered by the Registrar of Trade Marks under certificate of registration and the trade mark "LUCYNTA" was put on the Register of Trade Marks on 9 March, 2012.
(vi) According to the plaintiff, it launched its product's trade mark "LUCYNTA" in market in October 2011.
(vii) On 12 July, 2012, the plaintiff received summons of the proceedings of Suit No. 1931 of 2012 filed by Johnson and Johnson (defendant in the present suit) against the present plaintiff (Lupin Limited) alleging that the plaintiff is committing the act of passing off by using the mark "LUCYNTA". The said suit was filed in the Delhi High Court on 4 July, 2012. The plaintiff has contended that the application for registration of the mark "LUCYNTA" made by Johnson and Johnson (the defendant) in India was made on 2 September, 2011, which is subsequent in time to the application made by the plaintiff. The plaintiff has already got the trade mark "LUCYNTA" registered in its name.
(viii) Johnson and Johnson (the defendant) has contended in the suit that
(a) the defendant was the inventor of a new drug viz. TAPENTADOL, and was not only the first to coin and adopt a distinctive trade mark viz., 'NUCYNTA' in respect thereof, but the defendant had extensively used the same in the international market since 2008;
(b) prior to the plaintiff's registration, the defendant had also obtained registration thereof in various countries around the world;
(c) the plaintiff, before this Court had therefore fraudulently adopted a deceptively similar mark LUCYNTA, that too, in respect of the same drug and such a fraudulent adoption had proceeded to registration;
(d) the defendant before this Court had also prior to the filing of the infringement action by the plaintiff in this Court, filed a suit in respect of passing off against the plaintiff in the Delhi High Court. In retaliation the plaintiff herein had filed its action;
(e) the adoption by the plaintiff of its mark "LUCYNTA" was ex facie fraudulent and the suit filed by the plaintiff Lupin Limited was mala fide.
(ix) Johnson and Johnson (the defendant) contended that the case exemplified a situation where:
(a) a pirator / copier was attempting to restrain the original adopter merely because he had secured registration of the mark wrongly and/or fraudulently; and
(b) despite doing so, the pirator/copier was bold enough to assert that the Court was powerless in the matter and could not examine the obvious fraudulent nature of the mark and was duty bound to enforce the same merely because "the Registrar had granted registration".
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The other appeal arises from the suit filed by Parle Products Limited to enforce its rights in respect of its trade mark "GLUCO" registered in Class 30 of the Trade Marks Act. The defendant - Shakti Bhog Foods Limited contended that the mark "GLUCO" was descriptive and no one could have monopoly over the same as held by the Supreme Court in Corn Products Refining Company v. Shangrila Food Products Limited, AIR 1960 SC 142. The defendant also pointed out that the plaintiff had filed a suit in the Madras High Court in respect of the same mark "GLUCO" against Bakeman Industries Ltd. and the Madras High Court examined the objection about validity of the registration and refused to grant interim relief in favour of the plaintiff - Parle Products Limited. The defendant, therefore, contended that in such a situation the Supreme Court has held that the mark "GLUCO" was descriptive and no one could have monopoly over the same. The plaintiff cannot be allowed to contend that the application for injunction must be heard and decided on the basis that the Court cannot examine prima facie validity of registration at the stage of hearing the injunction application.
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The learned single Judge (B.R.Gavai,J.) in the order of reference has in paragraphs 15 and 16 of the judgment dated 13th August, 2012 in Notice of Motion (L) No. 2178 of 2012 (reported in 2012 CLC 1227 (Bom)) observed thus:
"15. It can be seen that the Division bench in M/s. Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd. (supra) held that once the registration is granted in favour of the proprietor, he is entitled to an order of injunction restraining the others from using the same even if the same is wrongly granted. It further held that it is not the practice of this Court to go into the question of validity of the registration at the stage of grant of injunction. However, the Division Bench of this Court in M/s. J.K. Sons v. M/s. Parksons Games and Sports (2011 (4) AIR Bom R 317) (supra), relying on the judgment of the Full Bench of this Court in the case of Abdul Cadur Allibhoy v. Moa-homedally Hyderally (supra), has held that the principle that a person who himself has imitated somebody else's mark and guilty of false and misleading representation is not entitled to an injunction, is applicable to the cases of infringement of trademark and passing off. In view of the law laid down by the Apex Court, as discussed hereinabove, there should be no difficulty in so far as action for passing off is concerned. It appears to be a settled position of law that an action for passing off would lie at the instance of prior user even against the registered user. The difficulty would be in respect of action for infringement of trademark, inasmuch as in view of the judgment of the Division Bench in the case of M/s. Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd. (supra), a proprietor plaintiff can claim an injunction even against a prior user, on the action of infringement, merely on the basis of having registration in his favour. In my respectful view, this would lead to anomalous situation. If an action for passing off is by a prior user, the Court would be permitted to go into the issues including the issue of validity of registration of the defendant's trademark and even grant an order of injunction in favour of the person whose mark is not registered and against the person whose mark is registered. However, if an injunction is sought by a proprietor of a registered trademark, in view of the view taken by the Division Bench of this Court in the case of M/s. Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd. (supra), the Court would be powerless to go into the question of validity or otherwise of the...
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