The Trademarks Registry in a bid to increase transparency and accessibility to stakeholders made, its once paid search facility, freely available to the public at large at since about January 2011. This was preceded by the official notification of the Trade Marks (Second Amendment ) Rules, 2010 dtd. December 29,2010, which amended the Trade Marks Rules 2002 (as was in force then) which inter alia provided for the omission of Rule 24 (Request to Registrar for Search) of the Trade Marks Rules 2002 and consequently the omission of Form TM-54 and Form TM-71(expedited search). It is obvious that such amendments were made with the intent of encouraging all stakeholders and brand owners to make use of the public search tool at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
It is however found that many new business owners, make the cardinal mistake of either not conducting trademark searches before the adoption of a brand/trademark or do not engage the services of a professional to seek an opinion prior to the adoption of a trademark. While trademark applications can be refused on absolute and relative grounds by the Trade Marks Registry, use thereof in commerce may be stopped by a competent Court in an action of either infringement or passing off brought by the proprietor of an earlier trademark. Such actions apart from the consequences of being liable for damages, account of profits, costs of proceedings may also have criminal consequences of fines and imprisonment. Such negligent adoption and use may not only lead to financial loss but also lead to loss of goodwill, market reputation, consumer trust apart from stress brought on by litigation.
Interestingly Courts from time to time have advocated the need for due diligence while adopting a trademark and that begins with trademark searches on the e-register of the Trade Marks Registry. The Hon’ble High Court of Bombay in a combined action of infringement and passing off brought by the proprietor of TELMA against TELZA both being pharmaceutical preparations, has observed “As to the question of the necessity of a search prior to adoption, this issue too arose in Café Madras and was dealt with in paragraphs 42 and 43 of that decision. Again, it is settled law that once a Court arrives at a finding that there is deceptive similarity, the question of honesty of adoption is wholly irrelevant. Given that there is material to show prior use by the Plaintiff, it was for the Defendants to show that they took both a register search and a market search and that neither of these showed up the Plaintiff’s mark. This has not been done. A Division Bench of this Court in Bal Pharma Limited v. Centaur Laboratories Private Limited, held that even where a defendant claims concurrent user, if he has not troubled himself to ascertain whether or not the same or a similar mark is the subject matter of another’s registration, he cannot be heard to complain, for he has been using it negligently. The new claimant must take the elementary precaution of taking a search in the register.”
The Courts have also refrained from being sympathetic to the investments made by a later adopter of a similar trademark. The Hon’ble High Court of Bombay in an action of infringement brought by the proprietor of ROFOL against PROFOL both being
Glenmark Pharmaceuticals Ltd. Vs. Signova Pharma (P) Ltd. & Anr., 2016 SCC Online Bom 4295 Para 14
pharmaceutical preparations has observed “That the defendant may have spent a large amount of money in the meantime is totally irrelevant. The defendants obviously knew of the plaintiff’s mark and in any event, must be deemed to have known about the same. Had they taken a search they would have found the plaintiffs mark. The use of the impugned mark would then be dishonest. If the defendants had not taken search of the register, they must be held to have been negligent and they cannot, in that case, be permitted to take advantage of their negligence. In any event, at least from the year 2005, the defendants were aware of the plaintiff’s mark. If they spent a large amount of money thereafter, they did so at their own risk….”
It is also relevant to note that the law of the land envisages a strict approach when it comes to pharmaceuticals. Since any likelihood of confusion and/or deception caused due to similar names of medicinal preparations could be fatal to the health and life of consumers. In a Special Leave brought by the proprietors of FALCIGO against FALCITAB, the Hon’ble Supreme Court of India observed “As far as the present case is concerned, although both the drugs are sold under prescription, this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for the supervision of physicians and pharmacists of the medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with a high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted especially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on public health.”
To sum up the necessity of conducting a trademark search prior to adoption, the Hon’ble High Court of Bombay has observed “…. the Defendant was required to take search and had he done so, the Plaintiffs’ mark would undoubtedly have been cited as a conflicting mark. The requirement for search is something that is not optional or one that is only raised when matters come to Court. It is settled law, including by long line of decisions of this Court, that it is the Defendant’s obligation while applying for a mark not only to take a search of the register but also to do a market search. If he does not do so and an action is brought against him subsequently in infringement, he cannot claim innocence”.
This brings us to the following conclusions:-
Having been a part of the firm for over 9 years, Mr. Sarkar handles large trademark portfolios for clients in sectors of engineering, healthcare, fast-moving consumer goods, food and beverages, clothing and footwear, among others. He advises on all aspects of trademark laws ranging from availability searches the pre-filing stages through trademark clearance phases, applications, prosecution, oppositions, cancellations, maintenance of registrations to other post-registration activities. He also advises on trademark licensing and assignments. Also dealing with contentious matters concerning our clients’ foreign trademarks’ portfolios, Mr Sarkar is actively involved in matters concerning passing off and infringement actions before the courts and domain name disputes before the World Intellectual Property Organization (WIPO) and the.IN Registry. He engages in enforcement actions before the Customs Office. He is also an active member of the Copyright team and advises Authors on their business dealings with film producers in so far as it deals with adaptation rights. He is currently chairing the MEASA Sub- Committee of INTA Legislation and Regulation Committee. He is a member of INTA and APAA.
Wednesday, April 15, 2020 | Categories: Trademark, Litigation
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