Prior Use V. Prior Registration : Trademark Law

What is the difference between a Prior Use of a Trademark as opposed to Prior Registration of a Trademark? The Intellectual Property Appellate Board (hereinafter referred to as “the IPAB”) has scrutinized one of the most discussed issues of prior use and prior registration under the trademark law. In the case of Mandom Corporation v. Fem Care Pharma Ltd. & Ors. [1], the IPAB highlighted the various aspects under trademark law including locus standi, burden of proof and the issue of res judicata as well.

The application was filed by the Mandom Corporation who is a Japanese producer and seller of hair and skin products. The applicant has been continuously using the trademark “GATSBY” for its good under class 03 since 1978. The applicant’s product has a wide market internationally in countries such as Singapore, USA etc. The applicant applied and got the trademark “GATSBY” registered in India in the year 2006 vide registration number 830235. The facts and figures demonstrated by the applicant abundantly proves reputation, goodwill and brand equity created by them under the trademark “GATSBY” over such period of time.

Fem Care Pharma Ltd., on the other hand is an Indian company and is subsidiary of Dabur India Ltd.  Fem Care Pharma Ltd. applied for trademark for the same impugned mark “GATSBY” under classes 03 and 05. The said registrations were granted to the company vide registration number 635739 and 635744, respectively.

The applicant filed a rectification application for removal of the said trademark number 635739 in class 03. However, the application was dismissed by the IPAB. Aggrieved by the order of IPAB, the applicant approached the Bombay High Court. Thus, a second rectification petition was filed before the IPAB. The IPAB expressed dissatisfaction against the second rectification application as the matter was already pending before the Bombay High Court. In the meantime, the High Court made it clear that although the matter was sub judice before it, but it cannot be a ground for IPAB to not hear the rectification application.

The IPAB accepted the second rectification application but observed that it is maintainable only to the extent of ground under Section 47 (1)(b).

It was contended by Dabur India Ltd. that the application of the applicant company is barred by the virtue of principle of res judicata. Also, the Dabur India Ltd. filed an infringement suit against the applicant.

The following issues were raised in the case:

  1. Would Res judicata apply in the present scenario?
  2. Did the applicant have the locus standi to file the application?
  3. On whom the burden of proof lies to prove nonuse of the trademark?
  4. Grounds on which IPAB can decide the preference of prior use over prior registration?

COURT’S RULING:

The court dismissed the suit filed by the Dabur company against the applicant since no goods were put in the market under the impugned trademark from the date of filing to the date of the present suit.

For the above 4 points the court came to the following conclusion:

  1. PRINCIPLE OF RES JUDICATA

As per Section 13 of the Code of Civil Procedure, 1908 the term Res judicata means “the matter already decided by a competent court of law on merits cannot be filed again by the same parties over the same subject matter”. In the present scenario, a new application for rectification was filed in the year 2013 for a different time period. Further, the Bombay High Court mentioned in its order that the impugned trademark was not in use during 1994 to 2014. Thus, the principle of res judicata is not applicable in this present case and IPAB was allowed to hear and decide upon the matter.

  1. LOCUS STANDI

The Hon’ble High Court of Delhi, in the case of Kellogg Company v. Pops Food Products P Ltd. [2], held that when it can be shown that the applicant was in the same business as the person who registered the mark, and if the trademark while remaining in the registry can limit the applicant’s legal rights or prevent him from doing something he could have legally done, he would be having a locus standi to be heard as an aggrieved party.

  1. BURDEN OF PROOF

Though the IPAB admitted the judgements submitted by the Dabur Ltd. which stated that the burden of proof lies on the party making the statement, the burden of proof lies upon the rectification applicant. On the other hand, in case the evidence of use has been shown by the proprietor, the burden of proof lies upon the applicant. It is a well settled point of law that in case of no evidence the burden of proof shall shift to the proprietor.

However, since the non-use of the registered trademark was admitted by the Dabur Ltd., then as per Section 47(1)(b) the burden of proof lies upon the Dabur company itself.

  1. PRIOR REGISTRATION v. PRIOR USE

Fem Care Pharma Ltd. had successfully registered trademark in the year 2003. The applicant made a claim that as the respondent has not used the trademark yet. However, the respondent made a defense that they have done a dept research on the and are about to launch their products. Since there was no evidence to showcase the use of the mark by the Dabur Ltd. thus, IPAB held that just the process of registration itself does not amount to use of the mark.

Although the applicant filed the application for registration of the trade mark in the year 1998, but in the case of Sunder Paraman and Lalwani v. Caltex (India) Ltd. [3], it was held that the Trade Marks Act is not extraterritorial and use means use in India and not abroad.

Based on the aforesaid reasons, the IPAB held that the Dabur Ltd., did not justify the removal of the applicant’s mark and it was also held that he is not the owner of the mark. Filing of earlier application would not be sufficient. Further, since Dabur Ltd., had no real intention to use the impugned trade mark in trade or for any commercial purpose, the IPAB directed that his trade mark be struck from the register and allowed the application filed by the applicant.

Author: Abinav Rana, University School of Law and Legal Studies, GGSIPU, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010