Trademark Infringement against prior user
Background of the Case:
The case before us is a trademark infringement dispute between Rebanta Healthcare Pvt. Ltd. (the appellant) and Dr. Reddy's Laboratories Ltd. & ANR. (the respondents). The appellant is a private limited company incorporated on 06.03.2017, which has been using the trademark 'REBAHEAL' since July 2019 for its pharmaceutical products. The respondents are a leading pharmaceutical company that applied to register the trademark 'REBAHEAL' on a 'proposed to be used' basis in February 2023.
Issue of the Case:
The central issue in this case is the alleged infringement of the trademark 'REBAHEAL' by the appellant. The respondents claim that the appellant's use of the trademark is infringing upon their rights, as they had adopted the mark in June 2023. The appellant, on the other hand, contends that they are the prior user of the trademark and that the respondents are aware of their use of the mark.
Contentions of the Parties:
The appellant argues that they have been using the trademark 'REBAHEAL' since 2019 and have produced evidence to support this claim, including invoices and the availability of their products on websites. They also allege that the respondents did not conduct a proper search before filing the suit and did not serve a Cease-and-Desist notice upon becoming aware of the appellant's use of the trademark.
The respondents claim that they conducted adequate searches before filing the suit, including with the Registrar of Trademarks and a Google search, which did not reveal the appellant's use of the trademark. They also argue that the appellant's products were not available on the website '1mg.com' at the relevant time.
Issues Dealt with by the Court:
The court had to determine whether the appellant was the prior user of the trademark 'REBAHEAL' and whether the respondents had taken reasonable steps to ascertain the existence of the trademark before filing their suit. Additionally, the court considered whether mediation should be referred to resolve the dispute.
Reason and Final Decision:
The court found that the appellant had produced sufficient material to indicate that they are the prior user of the trademark 'REBAHEAL'. It was also noted that the respondents had not initiated pre-institution mediation as per the Commercial Courts Act, 2015. The court set aside the impugned ex-parte ad interim order and stayed the proceedings before the learned Single Judge.
Case Citation: Rebanta Healthcare Pvt. Ltd. Vs Dr. Reddy's Laboratories: 09.09.2024:FAO(OS) (COMM) 203/2024: 2024:DHC6926-DB:Delhi High Court:Vibhu Bakhru, H.J.
Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney] United & United
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