Case Note & Summary
The appellant, Leben Life Science Private Limited, filed a suit for permanent injunction against the respondent, Jarun Pharmaceuticals Private Limited, alleging infringement of its registered trade mark 'Rben' by the respondent's use of deceptively similar marks 'Reben-20' and 'Reben-DSR'. The appellant's predecessor adopted the mark in 2013 and obtained registration. The appellant claimed continuous, exclusive use since assignment. The respondent claimed prior use since 2008. The trial court dismissed the temporary injunction application. On appeal, the High Court examined whether the respondent had established continuous prior use under Section 34 of the Trade Marks Act, 1999. The court noted that the respondent failed to produce invoices and bills for 2013, indicating a gap in use. Relying on Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Ltd, the court held that continuous use must be proved, not just sporadic use. The court also referred to Neon Laboratories Ltd. v. Medical Technologies Ltd. for the principle that prior user must be continuous. The court found that the respondent did not satisfy the conditions for protection under Section 34. The appellant made out a prima facie case, balance of convenience was in its favor, and irreparable loss would ensue. The court allowed the appeal, set aside the trial court's order, and granted temporary injunction restraining the respondent from using the impugned marks until disposal of the suit. The respondent was also directed to maintain accounts of profits earned from the use of the marks.
Headnote
A) Trade Marks - Continuous Prior Use - Section 34 Trade Marks Act, 1999 - The respondent claimed prior use of the mark 'Reben-20' and 'Reben-DSR' but failed to produce invoices and bills for the year 2013, showing a gap in continuous use. The court held that mere adoption of a mark is not sufficient; continuous use must be established both before and after the date of registration. The respondent did not satisfy the requirement of continuous use, and thus the temporary injunction was granted in favor of the appellant. (Paras 3-12) B) Trade Marks - Temporary Injunction - Prima Facie Case - The appellant, being the registered proprietor of the trade mark 'Rben', made out a prima facie case of infringement. The balance of convenience was in favor of the appellant as the respondent failed to demonstrate continuous prior use. Irreparable loss would be caused to the appellant if injunction was not granted. (Paras 12-13)
Issue of Consideration
Whether the respondent has established continuous prior use of the trade mark 'Reben-20' and 'Reben-DSR' from a date prior to the registration of the appellant's trade mark 'Rben' so as to avail protection under Section 34 of the Trade Marks Act, 1999.
Final Decision
The appeal is allowed. The order dated 26.06.2023 passed by the District Judge, Akola, is set aside. The respondent is restrained from using the trade marks 'Reben-20' and 'Reben-DSR' or any other deceptively similar mark till the disposal of the suit. The respondent is directed to maintain accounts of profits earned from the use of the said marks.
Law Points
- Continuous use
- Prior user
- Section 34 Trade Marks Act 1999
- Temporary injunction
- Burden of proof
