the trademark infringement suit GSK Consumer Healthcare S.A v. EG
Pharmaceuticals & Ors., IA No. 6749/2019 in CS (Comm) No. 238/2019, a
Single Judge (R.S. Endlaw, J.) of the Delhi High Court vide his order dated
October 31, 2019 while granting the interlocutory application (for interim
injunction) has clarified that the defence of acquiescence under Section 33(1)
of the Trade Marks Act, 1999 is not available against the proprietor of a
registered trade mark. The Court has held that a registered proprietor cannot
be non-suited by a defence of statutory acquiescence since such a defense is
available only in a passing off action by an unregistered mark.
Plaintiff instituted a suit against the Defendants to restrain them from
infringing its registered trade mark OTRIVIN through adoption and use of
BIOTRIVIN for identical goods by the Defendants. The Plaintiff claimed that its
product was launched in the year 1956 in Finland and the earliest launch of its
product in India can be traced back to the 1980s. The Plaintiff submitted that
the predecessor-in-interest of the Plaintiff became aware of the mark BIOTRIVIN
filed for registration by Defendant No. 3 when it was advertised (for
opposition in the Trade Marks Journal) on July 1, 2007. The Plaintiff stated
that while an opposition was filed against the Defendant’s trade mark
application, it was dismissed as time-barred, and subsequently the application
proceeded to registration. The Plaintiff submitted that it came across the
Defendant’s product on online pharmacies in April 2019 pursuant to which it
instituted the present suit.
Written Statement was filed only by Defendant No. 2. The joinder of Defendant
No. 1 to the suit was challenged on the ground that the latter is not concerned
with the subject dispute since it is merely a manufacturer of the product under
the trade mark of the Defendant No. 2. No interlocutory application was,
however, filed by Defendant No.1 seeking deletion of Defendant No. 1. The
joinder of Defendant No. 3 was also pointed out as being bad on the ground that
it was dissolved and merged with the Defendant No. 2 vide order dated March 15,
2017 of National Company Law Tribunal, Ahmedabad. Formal deletion of Defendant
No. 3 was also not sought though.
No. 2 contended that it had been using the mark BIOTRIVIN since 2007. They
further contended that the Plaintiff is aware of the manufacturing license
granted to the Defendant in 2007 which was subsequently renewed in July 2012.
The Defendant went on to contend that its products under the mark BIOTRIVIN are
sold in the market since 2008 which is within the knowledge of the Plaintiff.
Relying on this, the Defendant contended that there has been statutory
acquiescence on the part of the Plaintiff so its prima facie case for an
interim injunction is weak.
ease of reference, the relevant portion of Section 33(1) of the Trade Marks
Act, 1999 has been extracted below:
33. “Effect of acquiescence – (1) Where the proprietor of an earlier
trade mark has acquiesced for a continuous period of five years in the use of a
registered trade mark, being aware of that use, he shall no longer be entitled
on the basis of that earlier trade mark—.”
analysing the availability of the defence of acquiescence under Section 33(1)
against a ‘registered’ proprietor of a trade mark, the Court elaborated on how
the statute distinguishes between a proprietor and a registered proprietor. The
Court, in this regard, held that – “Section 33 refers to the proprietor of
an earlier trade mark. It does not refer to “registered proprietor or
proprietor of an earlier registered trade mark”. The Act makes a distinction
between a “proprietor” and a “registered proprietor”, with Section 2(v) thereof
defining only the registered proprietor in relation to a trade mark as a person
for the time being entered in the Register as proprietor of the trade mark.
Thus when Section 33 refers to a “proprietor” as distinct from “registered
proprietor”, reference thereto is evidently to a proprietor of an earlier trade
on this reading, the Court went on to hold that the defence of statutory
acquiescence is not available against the Plaintiff since it owns a
registration of its mark; that therefore the provision contained in Section
33(1) is not applicable.
arriving at its decision, the Court placed reliance on a judgment of the
Division Bench (M. Mudgal, J. and V.J. Mehta, J.) of the Delhi High Court in
the case of Goenka Institute of Education & Research v Anjani Kumar
Goenka & Anr., FAO (OS) No. 118/2009, wherein the Court had observed,
but by way of obiter – “…Section 33 is with reference to the right of an
unregistered user and a subsequent registered user…”. The Court in this
earlier case had not directly pronounced on the issue of unavailability of the
defence of acquiescence for being set up against a registered mark.
attention had been drawn to two judgments of the Bombay High Court which had
taken a different view on this point.
Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd., 2014 SCC Online Bom
1064, the Court had observed – “All that Section 33 says is that where, as
between two registered proprietors, the later registrant is able to show
acquiescence of at least five years, certain statutorily mandated consequences
follow. In other cases, the plea can well be taken, the only difference being
that the statutorily mandated consequences in Sections 33(1)(a), (b) and
Section 33(2) would not necessarily result.”.
Electro Techniques vs. Neelkanth Power Station, 2014 SCC Online Bom 663, the other
judgement of the Bombay High Court discussed by the Delhi High Court, had
observed – “Section 33 deals with the case of two registered trade marks,
registered at different points of time. If the proprietor of the earlier trade
mark (registered prior in point of time) acquiesces in the use of the later
trade mark (registered later in point of time) for five years, he cannot apply
to have the registration of the later trade mark declared invalid or oppose the
use of the later trade mark, unless the registration of the later trade mark
was not applied in good faith.”
The Delhi High Court found itself unable to concur with the opinions of the Bombay High Court in the two afore-mentioned cases. It stated – “Section 33 is found to be designed for the protection of a registered trade mark, by saving it from an action for passing off, by providing that if the proprietor of a mark has acquiesced in use of a registered trade mark for a period of five years, he/she shall not be entitled to apply for revocation of the mark or to oppose the use thereof.”
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