Case Note & Summary
The dispute between Medical Technologies Limited (petitioner) and Neon Laboratories Limited (respondent no.1) concerned the trade marks 'PROFOL' and 'ROFOL'. The petitioner alleged it had been using the mark 'PROFOL' through its predecessor since April 1998 in respect of medicinal preparations, while respondent no.1 had registered the mark 'ROFOL' on 19.10.1992 but started using it only on 16.10.2004. The petitioner filed a passing‑off suit in the City Civil Court, Ahmedabad, and obtained an injunction restraining respondent no.1 from using 'ROFOL', which was confirmed by the Gujarat High Court and not disturbed by the Supreme Court. Following this, the petitioner filed a rectification application before the IPAB under Sections 47, 57 and 127 of the Trade Marks Act, 1999, seeking removal of 'ROFOL' from the register. The IPAB dismissed the application on 29.05.2009 and a subsequent clarificatory/review application on 10.08.2010.
The writ petition under Articles 226 and 227 of the Constitution challenged these orders. The petitioner argued that common law rights acquired through prior use are superior to statutory rights conferred by registration, relying on Section 27(2) which preserves passing‑off actions, and Section 28(1) which makes the exclusive right subject to other provisions of the Act. It was contended that the petitioner and its predecessor had used 'PROFOL' continuously since 1998, building substantial goodwill and reputation, and that use by a licensee (Core Laboratories Ltd. and Claris Lifesciences Ltd.) should be treated as use by the proprietor. The petitioner further submitted that the IPAB failed to consider the ground under Section 57 that the registration had been granted without sufficient cause, and wrongly held that the petitioner was not using the mark personally.
The respondent no.1 opposed the petition, relying on its registration and contending that the petitioner's mark 'PROFOL' had not yet been registered in India. The IPAB's orders were defended on the basis that the petitioner was not an aggrieved person and that the registered proprietor's rights prevailed.
The Bombay High Court heard extensive arguments from both sides. The judgment text provided does not contain the court's final analysis or operative order; it ends during the submissions of the petitioner's counsel. Therefore, the ultimate decision of the court on the writ petition is not available in the extract.
Headnote
A) Trade Marks – Rectification of Register – Grounds under Sections 47, 57 and 127 – Dismissal by IPAB – The IPAB dismissed the petitioner's application to expunge the trade mark 'ROFOL' registered in the name of respondent no.1, and also dismissed the subsequent review/clarificatory application. (Paras 2, 3(vi))
B) Trade Marks – Common Law Rights vs Registration – Prior User – Section 27(2) and Section 28(1), Trade Marks Act, 1999 – The petitioner contended that common law rights acquired through prior use are superior to statutory rights conferred by registration, relying on Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd., AIR 1965 Bombay 35, and that as prior user of 'PROFOL' since April 1998, it had superior rights despite respondent's registration in 1992. (Paras 4, 5, 6, 7)
C) Trade Marks – Use by Licensee – Section 47 – The IPAB held that the petitioner had not been using the mark personally but through a licensee; the petitioner argued that use by a licensee amounts to use by the proprietor and enures to the licensor's benefit, a well-settled legal position. (Para 8)
D) Trade Marks – Non‑Consideration of Section 57 – The ground that the impugned registration had been granted without sufficient cause and the entry wrongly remains on the register under Section 57 was not decided by the IPAB, which the petitioner claimed caused prejudice. (Para 8)
E) Trade Marks – Aggrieved Person – Standing – The IPAB gave a contrary finding on the issue of the petitioner being an aggrieved person under the Act. (Para 9)
F) Trade Marks – Passing Off and Deception – The petitioner relied on the injunction order passed by the City Civil Court, Ahmedabad, restraining respondent no.1 from using 'ROFOL', and contended that use of 'ROFOL' would cause confusion and deception leading to passing off. (Para 9)
Issue of Consideration
Whether the Intellectual Property Appellate Board (IPAB) was justified in dismissing the application for rectification of the registered trade mark 'ROFOL' under Sections 47, 57 and 127 of the Trade Marks Act, 1999 on grounds of prior user and common law rights
Law Points
- common law rights superior to statutory rights based on prior use
- Section 28(1) exclusive right subject to other provisions of the Act
- Section 27(2) preserves passing off action unaffected by registration
- registration does not confer additional right over prior user
- use of trade mark by licensee enures to benefit of licensor
Case Details
2012 LawText (BOM) (04) 32
Writ Petition No. 2669 of 2011
D.D. Sinha, V.K. Tahilramani
Janak Dwarkadas, Vinod Bhagat, Dhiren Karania, Virag Tulzapurkar, Amit Jamsandekar
Medical Technologies Limited
Neon Laboratories Limited, The Deputy Registrar, Intellectual Property Appellate Board, The Registrar of Trade Marks
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Nature of Litigation
Writ petition under Articles 226 and 227 of the Constitution of India challenging the orders of the Intellectual Property Appellate Board (IPAB) dismissing the petitioner's application for rectification of the trade mark register to remove the mark 'ROFOL' registered in the name of respondent no.1, and the subsequent dismissal of the review application.
Remedy Sought
The petitioner sought setting aside of the IPAB orders dated 29.05.2009 and 10.08.2010, and consequent rectification of the register by expunging the trade mark 'ROFOL'.
Filing Reason
The petitioner claimed to be the prior user of the mark 'PROFOL' since April 1998, and sought rectification on grounds that the registration of 'ROFOL' was without sufficient cause, that the mark was not used by the registered proprietor for a long period, and that the petitioner had superior common law rights.
Previous Decisions
The IPAB dismissed the rectification application on 29.05.2009 and the review/clarificatory application on 10.08.2010. Prior civil suits: The petitioner obtained an ex parte injunction in City Civil Court, Ahmedabad, confirmed and upheld up to the Supreme Court, restraining respondent no.1 from using 'ROFOL'. The Supreme Court granted leave on 30.01.2006 and directed maintenance of accounts but no interim order. Respondent no.1's suit before Bombay High Court for infringement and passing off, where no interim orders were passed.
Issues
Whether the IPAB erred in dismissing the rectification application?
Whether common law rights acquired through prior use of a trade mark are superior to statutory rights conferred by registration?
Whether use of a trade mark by a licensee enures to the benefit of the licensor for the purpose of establishing use?
Whether the IPAB failed to consider the ground under Section 57 of the Trade Marks Act, 1999 regarding registration without sufficient cause?
Whether the petitioner was an aggrieved person under the Act?
Whether the use of 'ROFOL' by the respondent would cause confusion or deception and amount to passing off?
Submissions/Arguments
The petitioner argued that common law rights based on prior use are superior to statutory registration rights, relying on Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd.
Section 28(1) exclusive right is subject to other provisions, and Section 27(2) preserves passing-off actions unaffected by registration.
The petitioner first used 'PROFOL' through its predecessor since April 1998, with substantial sales and goodwill, while respondent commenced use of 'ROFOL' only in 2004 despite registration in 1992.
Use of the trade mark by a licensee is use by the proprietor; IPAB erred in holding that the petitioner did not use the mark personally.
The IPAB failed to decide the ground of rectification under Section 57, i.e., that registration was obtained without sufficient cause and the entry wrongly remains on the register.
The IPAB gave a contrary finding on the petitioner being an aggrieved person.
The City Civil Court injunction against the respondent confirms the petitioner's superior rights and the deceptively similar nature of the marks would cause confusion.
Judgment Excerpts
The rights acquired through prior use are however superior to rights acquired through registration, as registration does not confer any additional right.
Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
It is well-settled position in law that use of the trade mark by the licensee amounts to and enures to the benefit of the licensor.
Special Leave granted. No interim order except that the respondents shall maintain accounts. Liberty to mention for early date of hearing. We make it clear that so far as the parties are concerned, whatever rights they have in law may be urged in proceedings pending before the other Courts.
Procedural History
19.10.1992: Respondent no.1 applied for and obtained registration of trade mark 'ROFOL' with effect from 19.10.1992. April 1998: Petitioner (through predecessor) commenced use of 'PROFOL'. 16.10.2004: Respondent no.1 started using 'ROFOL'. 19.07.2005: Petitioner filed passing-off suit in City Civil Court, Ahmedabad. 20.07.2005: Ex parte injunction granted against respondent no.1. 17.10.2005: Injunction confirmed. 19.12.2005: Gujarat High Court dismissed respondent's appeal against injunction. 16.01.2006: Respondent no.1 filed SLP before Supreme Court. 30.01.2006: Supreme Court granted leave, directed maintenance of accounts, no interim order. 25.02.2006: Petitioner filed rectification application before IPAB under Sections 47, 57 and 127. 17.06.2006: Respondent no.1 filed counter statement. 07.05.2008: Petitioner filed reply. 29.05.2009: IPAB dismissed rectification application. 10.08.2010: IPAB dismissed clarificatory/review application. 2011: Petitioner filed Writ Petition No.2669 of 2011 in Bombay High Court. 03.04.2012: Judgment reserved on 08.02.2012, pronounced.
Acts & Sections
- Trade Marks Act, 1999: 47, 57, 127, 28(1), 27(2)
- Constitution of India: 226, 227
