In 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.
The 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.
A 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.
Defendant 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.
For ease of reference, the relevant portion of Section 33(1) of the Trade Marks Act, 1999 has been extracted below:
Section 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—.”
While 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 mark.”
Based 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.
While 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.
The Court’s attention had been drawn to two judgments of the Bombay High Court which had taken a different view on this point.
In Emcure 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.”.
Neel 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.”