Prior User of Trade Mark prevails over prior Registration but subsequent User of Trademark
Introduction:This case revolves around a dispute concerning the use and registration of trademarks in the pharmaceutical industry. Neon Laboratories Ltd. (Appellant) and Medical Technologies Ltd. (Respondents) contested the rights over trademarks "ROFOL" and "PROFOL," both referring to a generic drug "Propofol." The Supreme Court examined issues of prior use, trademark registration, and equitable principles in granting injunctions.
Background:The pharmaceutical sector often faces trademark disputes due to the descriptive or generic nature of drug names. This case highlights the legal complexities of trademark ownership, prior use rights, and market goodwill in a highly competitive industry.
Brief Facts of the Case:
Parties Involved:The Respondents (Medical Technologies Ltd. and others) are manufacturers and marketers of pharmaceutical products, specifically "PROFOL."The Appellant (Neon Laboratories Ltd.) is another pharmaceutical company marketing "ROFOL." Trademark Registration and Use:The Respondents' predecessor applied for the trademark "PROFOL" in 1998 and began using it in the market the same year.The Appellant applied for the trademark "ROFOL" in 1992 but began using it only in 2004, after a significant delay. Legal Proceedings:The Respondents filed a suit in 2005, alleging that "ROFOL" was deceptively similar to "PROFOL" and sought an injunction, damages, and an account of profits.The trial court granted an interim injunction in favor of the Respondents, which was upheld by the Gujarat High Court.
Issues Involved: Whether the Respondents had established prior use of the trademark "PROFOL." Whether the Appellant's trademark registration of "ROFOL" in 1992 could override the Respondents' goodwill and prior use. Whether the balance of convenience and irreparable harm favored granting an interim injunction.
Submissions of the Parties:
Appellant's Arguments:Claimed priority based on trademark registration dating back to 1992.Argued that the Respondents' use of "PROFOL" began only after their trademark application.Contended that the Respondents' goodwill did not override their statutory rights.
Respondents' Arguments:Asserted that they had been using "PROFOL" since 1998, long before the Appellant began using "ROFOL" in 2004.Highlighted that the Appellant had been dormant for over 12 years after filing for registration.Argued that their established market presence and goodwill entitled them to protection against passing off.
Reasoning and Analysis by the Court
Prior Use Doctrine:The Court emphasized the importance of prior use in trademark disputes. It noted that the Respondents had been using "PROFOL" since 1998, while the Appellant began using "ROFOL" only in 2004.Delay in Use by the Appellant:The Appellant's 12-year delay in using "ROFOL" was deemed significant. The Court held that such dormancy could indicate abandonment of the trademark.Balance of Convenience:The Court found that denying the injunction would harm the Respondents' goodwill and market reputation, whereas the Appellant had only recently started using "ROFOL." Irreparable Harm:The Court concluded that the Respondents would suffer irreparable harm if the injunction was denied, given the potential loss of market share and consumer trust.Statutory Provisions:The Court referred to Section 34 of the Trade Marks Act, 1999, which protects the rights of prior users over registered trademarks. Judicial Precedents:The Court cited N.R. Dongre v. Whirlpool Corporation and Milmet Oftho Industries v. Allergan Inc. to reinforce the principle that prior user rights supersede subsequent registration.
Decision:The Supreme Court upheld the decisions of the trial court and the High Court, granting an interim injunction in favor of the Respondents. The Appellant was restrained from using the trademark "ROFOL."
Conclusion:This case underscores the significance of prior use and market goodwill in trademark disputes. The Supreme Court's decision reinforces the principle that statutory rights conferred by registration cannot override the equitable rights of a prior user. It also highlights the necessity for timely action in asserting trademark rights to avoid allegations of abandonment.The judgment serves as a critical precedent in balancing statutory and common law rights in the realm of intellectual property.
Case Title: Neon Laboratories Ltd. vs. Medical Technologies Ltd.
Date of Order: October 5, 2015
Case No.: Civil Appeal No. 1018 of 2006
Neutral Citation: 2015 AIR SCW 6470, 2016 (2) SCC 672
Court: Supreme Court of India
Judges: Justice Vikramajit Sen and Justice Shiva Kirti Singh
Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539
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