The bona fide intention to use a trade mark at the time of registration
Mac Laboratories Private Ltd. Vs. American Home Products Corporation & Anr.
Case DetailsDate of Order: 14th May 1968
Neutral Citation: AIR 1969 Cal 342
Court: Calcutta High Court
Judge: Justice P.B. Mukharji
Introduction: This case involves a trade mark dispute concerning the removal of the registered trade mark Dristan, owned by American Home Products Corporation, on grounds of non-use and lack of bona fide intention to use. The appellant, Mac Laboratories Private Ltd., filed an application for rectification, arguing that the respondent had not used the trade mark in India and had no genuine intention to use it.The case raises significant legal issues, including:The bona fide intention to use a trade mark at the time of registration. The concept of trafficking in trade marks. The eligibility of an aggrieved person to seek rectification.Whether the use of the mark by a third-party company (Geoffrey Manners & Co. Ltd.) constitutes use by the registered proprietor.
Detailed Factual Background:The respondent, American Home Products Corporation, a U.S.-based company, registered the trade mark Dristan in India under Class 5 (medicinal preparations for respiratory ailments) on 18th August 1958.The appellant, Mac Laboratories Private Ltd., later applied for the registration of its own trade mark Tristine for similar products.
The respondent opposed Mac Laboratories' Tristine mark on the ground that it was deceptively similar to Dristan.In response, Mac Laboratories filed an application for the removal of Dristan under Section 56 of the Trade and Merchandise Marks Act, 1958, arguing that the respondent never had a bona fide intention to use the mark in India and had not used it for an extended period.American Home Products Corporation contended that they had introduced Dristan in India through their associate company, Geoffrey Manners & Co. Ltd., and that the agreement with this company constituted valid use of the trade mark.
Detailed Procedural Background:The appellant (Mac Laboratories) filed an application before the Registrar of Trade Marks under Section 56 for removal of Dristan from the register.The Registrar dismissed the application, ruling that:The respondent had a bona fide intention to use the mark through Geoffrey Manners & Co. Ltd.The use of Dristan by Geoffrey Manners qualified as use by the registered proprietor.Aggrieved by this order, Mac Laboratories filed an appeal before the Calcutta High Court under Section 109 of the Trade and Merchandise Marks Act, 1958.
Issues Involved:Whether the respondent had a bona fide intention to use the trade mark Dristan at the time of registration.Whether the use of Dristan by Geoffrey Manners & Co. Ltd. constituted use by the registered proprietor, American Home Products Corporation.Whether the non-use of Dristan warranted its removal under Section 56 of the Act.Whether the appellant, Mac Laboratories, was an "aggrieved person" eligible to seek rectification.
Detailed Submission of the Parties:Appellant (Mac Laboratories Private Ltd.) Lack of Bona Fide Intention:The appellant argued that American Home Products Corporation had no real intention to use Dristan in India at the time of registration. The respondent merely registered the mark as a defensive mechanism to block other traders.Non-Use of Trade Mark:The appellant contended that the respondent had not used Dristan in India since its registration in 1958.The agreement with Geoffrey Manners & Co. Ltd. was a post-registration arrangement that did not establish original intent to use.Geoffrey Manners Not a Valid User:The appellant argued that Geoffrey Manners & Co. Ltd. was an independent legal entity and not a registered user under the Act.The use of the mark by an independent company does not qualify as use by the registered proprietor.
Respondent (American Home Products Corporation)Intention to Use and Use by Geoffrey Manners:The respondent argued that they had a genuine intention to introduce Dristan in India through Geoffrey Manners & Co. Ltd.The association with Geoffrey Manners was a valid mechanism for market entry.Legal Use by Geoffrey Manners:The respondent contended that since Geoffrey Manners & Co. Ltd. was manufacturing and distributing Dristan under their supervision, the trade mark was in legitimate use.
Detailed Discussion on Judgments Referred:In re Batt (John) and Co.’s Registered Trade Marks, 1898-2 Ch 432 Held that a trade mark must be registered with a definite and present intention to use.Ducker’s Trade Mark Case, (1928) 1 Ch 405 Ruled that an intention to assign or license a trade mark in the future does not constitute a bona fide intention to use.Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558 Established that non-use of a mark could lead to rectification under trade mark law.Pussy Galore’s Trade Mark Case, (1967) RPC 265 Clarified that a trade mark must be used by the registered proprietor or an authorized agent recognized under the law.Bostitch Trade Mark Case, (1963) RPC 183 Distinguished in this case; the High Court noted that the Bostitch case dealt with a distribution arrangement, whereas the present case concerned the original intent to use.
Detailed Reasoning and Analysis of the Judge:Bona Fide Intention to Use:The Court held that a bona fide intention to use must exist at the time of registration.The respondent failed to show any direct use or intent to use the mark in India before entering into an agreement with Geoffrey Manners. Use of Mark by Geoffrey Manners & Co. Ltd.The Court ruled that Geoffrey Manners was not a registered user under the Act.Use by an independent company does not qualify as use by the proprietor. Principle Against Trafficking in Trade Marks.The Court emphasized that trade marks should not be held as mere commodities to block market access for competitors. Eligibility of "Aggrieved Person"Since the respondent had opposed Mac Laboratories' Tristine mark, the appellant had a genuine grievance and qualified as an aggrieved person.Final Decision.The appeal was allowed, and the trade mark Dristan was removed from the register.The Court ruled that the respondent did not have a bona fide intention to use the mark at the time of registration.The Court held that use by Geoffrey Manners & Co. Ltd. did not qualify as use by the registered proprietor.The decision reaffirmed India’s strict stance against trafficking in trade marks.
Conclusion:This judgment set a precedent by reinforcing the requirement of bona fide intention to use at the time of registration and ensuring that trade marks are not misused to restrict competition. The ruling safeguards the integrity of the trade mark register by ensuring that only actively used trade marks remain protected.
