What could be effect of in case a party is not using the registered trade mark and instead of this the same has been using family of trademarks with suffix or prefixes?
Let us first of all under stand , what is family of Trademark? A family of trademarks refers to a group of trademarks that have a similar or related Trademark , having common element that identifies and distinguishes a particular company, brand, or product from others in the market. The family may include multiple variations or styles of the same logo or name registered as separate marks. These trademarks are registered to protect the brand identity, create brand recognition and awareness, and prevent confusion among consumers.
In these family of Trademark, the essential common element is referred to as House Mark. Like in the present case CONTIN was referred to as the House Mark.
The Present Case involves CONTIN family of trademarks. Though Plaintiff was having registration for trademark CONTIN since the year 1989. However it was actually not used in relation to its pharmaceutical products. The Plaintiff was using various other family of trademark with other prefixes or suffixes. The question is this , whether use of family of trademarks can be held to be use of registered House Mark?
Plaintiff's Subject Matter Trademark: CONTIN family of Trademarks , especially FECONTIN-F
Plaintiff's Claimed User: March 1993
Plaintiff's Registered Trademark: CONTIN registered under No. 518594 in class 05 since 19.10.1989 while trademark FECONTIN-F: 518596 in class 05.
Defendant's Trademark: FEMICONTIN
Defendant's User: Between November 2005 till October 2007.
The Main Defense of Defendant in the Suit:
Delay/Latches/Acquiescence
The Defendant alleged that in spite being aware of Defendant in the year 1999, the Suit was filed after inordinate delay , only in the year 2004.
The another defenses were non use of registered House Trademark by the Plaintiff.
That the Plaintiff's Trademark was descriptive.
The Judgement:
The Plaintiff's Suit was dismissed on the ground of inter alia
The Reasons of the Hon'ble Court:
1.The Issue of delay and latches was decided in favour of the Plaintiff. Merely because the Plaintiff issued legal notice in the year 1999 and then Suit was filed in the year 2004, this does not mean the Suit of Plaintiff can be be dismissed on the ground of Delay.
2. Though the Defendant pleased user for a limited period, however no document has been placed on record by the Defendant showing user of impugned Trademark between 1999 to 2005.
3.In view of above, the Suit was held not liable to be dismissed on the ground of delay.
4.Though the Plaintiff has claimed proprietary right in the family of Trademark CONTIN, however it has been admitted by the Plaintiff during the cross examination that the same has not used it for its pharmaceutical product.
5.User of similar Trademark by the Registered Proprietor can not be held to be use of that trademark within the meaning of Section 2 (2) (c) of the Trademarks Act 1999. Even though CONTIN may be used as a prefix or suffix in a family of marks by the plaintiff, the same would not amount to use of the registered mark.
6.During the cross examination, the Plaintiff admitted FE-CONTIN to be descriptive. FE‟ relates to iron, which is an ingredient of the plaintiff's product, while CONTIN is being used in relation to the products with Continuous Drug Delivery system, that is where the drug will have a continuous effect in the body for a longer duration.
7.The Court observed that while evaluating the deceptive similarity, the descriptive parts have to be given less weightage.
8.In view of afore mentioned observation, the Hon'ble High Court of Delhi has held the trademark FE-CONTIN to be descriptive to the product as the Plaintiff itself has admitted that "FECONTIN-F is an iron supplement and is used by female patients normally during pregnancy".
9.The Hon'ble Court also observed that Plaintiff's Trademark FECONTIN and Defendant's Trademark FEMICONTIN not to be deceptively similar.
10. The Plaintiff also did not lead any evidence to the effect that there has been any confusion on account of user of Defendant.
11.In view of afore mentioned observation, the subject matter Suit was dismissed.
The outcome of the afore mentioned case law is that the effect of not using the registered HOUSE trademark and instead using a family of trademarks with suffixes or prefixes does not amount to be user of that registered House Trademark. In order to reap the benefit of its registered House Mark, the Plaintiff can not rely upon use of other family of trademark.
Non use of registered House Mark could result in the loss of the exclusive right to use the original trademark, as it may be deemed abandoned due to lack of use. Hence companies are encouraged to use their registered trademark consistently and prominently to maintain its distinctiveness and prevent dilution.
The Case Law Discussed:
Judgment date: 23.03.2023
Case No: CS Comm 353 of 2018
Neutral Citation No. 2023/DHC/2049
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Navin Chawla
Case Title: Modi Mundi Pharma Pvt. Ltd. Vs Preet International Private Limited
DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.
Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539
Email: ajayamitabh7@gmail.com
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