Case Note & Summary
The Petitioner, Glaxo Group Limited, a global pharmaceutical company, filed a petition under Section 47 of the Trade Marks Act, 1999 seeking cancellation of the registration of the mark 'PAXIL' granted to Respondent No. 1, Shreya Life Sciences Private Limited, under Registration No. 1153709 in Class 5 for pharmaceutical and medicinal preparations. The Petitioner claimed to have used the mark 'PAXIL' since 1991 and obtained registrations in various countries, with a spillover reputation in India. The Petitioner became aware of the impugned registration in June 2024 and discovered that Respondent No. 1 had never used the mark. The Petitioner argued that it was a 'person aggrieved' as the registration precluded it from seeking registration in India, and that the registration was liable for cancellation due to non-use. The Court, relying on the Supreme Court decisions in Milmet Oftho Industries v. Allergen Inc. and Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., held that the Petitioner, being the first adopter and user of the mark globally, with spillover reputation in India, qualifies as a 'person aggrieved'. The Court found that Respondent No. 1 had not used the mark, and thus the impugned registration was liable to be removed from the register. The petition was allowed, and the registration of the mark 'PAXIL' in favour of Respondent No. 1 was cancelled.
Headnote
A) Trade Marks Act - Cancellation of Registration - Non-Use - Section 47 Trade Marks Act, 1999 - The Petitioner sought cancellation of the registration of the mark 'PAXIL' granted to Respondent No. 1 on the ground of non-use. The Court held that the Petitioner, being the first adopter and user of the mark globally since 1991, with spillover reputation in India, qualifies as a 'person aggrieved' and the impugned registration is liable to be removed for non-use. (Paras 1-6) B) Trade Marks Act - Person Aggrieved - Liberal Construction - Section 47 Trade Marks Act, 1999 - The Court, relying on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., held that the expression 'person aggrieved' is to be construed liberally and not in a narrow or technical sense. The Petitioner's prior use and reputation in the mark made it a person aggrieved. (Paras 6) C) Trade Marks Act - First in the World Market - Spillover Reputation - Section 47 Trade Marks Act, 1999 - The Court applied the principle from Milmet Oftho Industries v. Allergen Inc. that in the context of pharmaceutical products, the 'first in the world market' test applies, and the Petitioner's global use since 1991 predates Respondent No. 1's registration in 2002, establishing the Petitioner's rights. (Paras 5)
Issue of Consideration
Whether the impugned registration of the mark 'PAXIL' in favour of Respondent No. 1 is liable to be cancelled under Section 47 of the Trade Marks Act, 1999 on the ground of non-use, and whether the Petitioner qualifies as a 'person aggrieved'.
Final Decision
The petition is allowed. The registration of the mark 'PAXIL' under Registration No. 1153709 in Class 5 in favour of Respondent No. 1 is cancelled.
Law Points
- Section 47 Trade Marks Act 1999
- non-use of trademark
- person aggrieved
- first in the world market
- spillover reputation
- cancellation of registration
