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1998 DIGILAW 1020 (MAD)

Ttk Pharma v. Robapharm Ag

1998-07-31

S.THANGARAJ

body1998
Judgment :- S. Thangaraj, J. The applicant TTK Pharma Ltd. have filed this application to stay the proceedings in C.S. No. 1148 of 1993 till the disposal of the rectification application CAL No. 653 before the Registrar of Trade Marks, Calcutta. 2. The main averments found in the affidavit filed alongwith the application are as follows: The applicant have filed an application for rectification for removal of the respondent's trade mark OSSOPAN registered under No. 129304 in Class 5 on the ground of non-use amongst several other grounds before the Registrar of Trade Mark, Calcutta, in CAL No. 653. The application was taken on file and allotted serial No. 583683 dated 30.10.1992. The respondent have filed C.S. No. 1148 of 1993 before this Court after filing of the rectification application in CA. No. 653 by the applicant. The respondent have never used the trade mark "OSSOPAN" in India at any point of time. The respondent have registered the trade mark "OSSOPAN" in India without any bona fide intention to use the same and for more than 5 years the same has not been used by the respondent. The trade mark OSSOPAN is wrongly remaining on the register and is invalid ab initio, and the same to be rectified under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. Therefore, C.S. No. 1148 of 1993 on the file of this Court has to be stayed. 3. The main averments found in the counter filed by the respondent are as follows: The application for rectification of plaintiff's registered trade mark is filed on the alleged ground of non-use. The suit cannot be stayed on the ground of an application for rectification for alleged non-use. "OSSOPAN" drug is supplied by the respondent herein. It is only on condition that the defendant were permitted to market the finished goods in the name of "OSSOPAN". Till recently the defendant were using "OSSOPAN" with the letter "R" in a circle to indicate that it is registered property with their consent. The defendant were well aware that the endorsement "Registration" is to indicate that the mark is registered in the name of plaintiff and not in the name of defendant. Till recently the defendant were using "OSSOPAN" with the letter "R" in a circle to indicate that it is registered property with their consent. The defendant were well aware that the endorsement "Registration" is to indicate that the mark is registered in the name of plaintiff and not in the name of defendant. So long as the defendant were using the plaintiff's trade mark with mutual commercial benefit and with plaintiff's consent and co-operation, defendant cannot claim to have used the trade mark adversely to the interest of the plaintiff. It is only the continuous use by the defendant after the "Cease and Desist Notice" which can be deemed to be adversed. Therefore, the application for stay may be dismissed. 4. The main averments found in the reply filed by the applicant are as follows: The application for rectification has been filed on the ground lack of intention to use the trade mark "OSSOPAN", non-use for a continuous period of more than 5 years, registration No. 129304 in Class 5 being wrongly remaining in the Register in the said registration is being contrary to the provisions of Section 111 of the Trade and Merchandise Marks Act, 1958 5. Robapharma AG, Switzerland, engaged in international business as manufacturer and merchant of a wide range of Pharmaceutical preparations, registered the trade mark "OSSOPAN" with effect from 13.5.1947 under the Trade Marks Act, 1940 under No. 129304 and the registration has been renewed every 7 years and the same is valid up to 1999. By a letter dated 2.12.1952, T.T.K. & Co., made certain proposals to become its exclusive agents for the sale of its pharmaceutical products in India and the applicant herein sought the permission of Government of India on 15.11.1958 to manufacture five different drugs including "OSSOPAN" as per their formula and market the same under Trade Mark "OSSOPAN". T.T.K. Pharma Limited started manufacturing "OSSOPAN" in the registered Trade Mark of Robapharma AG. On 25.9.1992 Robapharma AG wrote a letter to TTK Pharma Ltd. to use the Trade Mark "OSSOPAN" registered in India on behalf of Robapharma AG. T.T.K. Pharma Limited started manufacturing "OSSOPAN" in the registered Trade Mark of Robapharma AG. On 25.9.1992 Robapharma AG wrote a letter to TTK Pharma Ltd. to use the Trade Mark "OSSOPAN" registered in India on behalf of Robapharma AG. The applicant herein M/s. TTK Pharma Ltd. filed a Suit in C.S. No. 1401 of 1992 on the file of this Court for declaration and perpetual injunction against Robapharm restraining the said company from threatening directly or indirectly in any manner regarding the use of trade mark "OSSOPAN" and also interfering with the use of Trade Mark "OSSOPAN" in respect of pharmaceutical preparation of the applicant-company. 6. C.S. No. 1401 of 1992 was filed on 3.11.1992 before this Court. The respondent-company filed another Suit in C.S. No. 1148 of 1993 on the file of this Court and the plaint was amended with the following prayers:- (a) permanent injunction restraining the applicant herein from using the registered Trade Mark OSSOPAN registered under Registration No. 129304 in Class 5 dated 13.5.1947 in Part-A or in any manner infringing the registered trade mark "OSSOPAN", (b) for rendering true and faithful account of profits, and (c) directing the applicant herein to surrender all the cartons, containers, labels, packets and other printed materials. In the meantime, the applicant herein have filed a rectification application before the Registrar of Trademarks at Calcutta under the Trade and Merchandise Marks Act, 1958 in Cal-653 on 2.11.1992. This is clear from the communication of the Deputy Registrar of Trade Marks by his letter dated 2.12.1992 addressed to M/s. King & Patridge. 7. The applicant herein have filed the present application No. 368 of 1994 under Section 111 of the Trade and Merchandise Marks Act, 1958 "No action concerning the trade mark in question is pending in any Court." As already stated the said application has been filed on 2.11.1992, whereas the applicant herein have filed C.S. No. 1401 of 1992 before this Court on 3.11.1992. The manifest intention of the applicant seems to be that they had filed the application one day earlier to the Suit to prove the fact that no action is pending in any Court on the date of filing of application CAL 653. The manifest intention of the applicant seems to be that they had filed the application one day earlier to the Suit to prove the fact that no action is pending in any Court on the date of filing of application CAL 653. However, to the knowledge of the applicant they have signed the suit also on 2.11.1992 the date of the application before the Registrar of Trade Marks, which shows that they have taken two actions simultaneously and in such context the declaration of the applicant that "No action concerning the trade mark in question is pending in any Court" is false, to the knowledge of the applicant. The reasonable inference which can be drawn in such circumstances would be that the applicant have given a false statement in FORM TM-26 before the Registrar of Trade Marks. 8. When we see as to what had influenced the mind of the applicant to file an application, before the Registrar of Trade Marks and this Court is to safeguard the business interest of the particular product known as "OSSOPAN". Since 13.5.1947 the trade mark was registered in the name of the respondent Robapharma AG and it is valid upto 1999 and for the first time the applicant company have sent a letter dt. 2.12.1992 to the respondent to have the sole agency of the product of OSSOPAN. The registration under the Trade and Merchandise Marks Act, 1958 continuous to be in the name of the respondent herein for all these years and it has been renewed up to 1999. The applicant herein, who was the sole agent of the respondent, had started manufacturing the products and had distributed the product under the same registered trade mark. We need not enter into the question, as to whether the applicant herein have used the same trade mark or a mark deceptively similar to that of the respondent, since the same is a major question to be decided in the Suit. The various letters including the reply sent by the applicant herein on 19.3.1992 for the letter sent by the respondent herein dated 10.1.1992 would clearly prove that the applicant have been using the trade mark "OSSOPAN" for all these years with the consent of the respondent herein. The various letters including the reply sent by the applicant herein on 19.3.1992 for the letter sent by the respondent herein dated 10.1.1992 would clearly prove that the applicant have been using the trade mark "OSSOPAN" for all these years with the consent of the respondent herein. The applicant cannot contend that they had independent right over the trade mark because of the long user or that acquiesced the right over the trade mark due to the allowance given by the respondent herein for long number of years. At the same time, the applicant herein cannot also contend that the Suit has not been filed by them or by respondent under the Trade and Merchandise Marks Act. Though the Suits have been filed for declaration and injunction, accounting and allied prayers, basically both the Suits are filed under the Trade and Merchandise Marks Act. If the applicant contend that the Suit filed by the respondent herein is for different prayers, then the basic question will arise regarding the maintainability of the present application. Therefore on whatever angle we see the manifest intention of the applicant herein, it is clear that they do not like to lose the business on the basis of the trade mark registered by the respondent and therefore they thought fit to file the Suit as well as the application before the Registrar of Trade Marks under the guise of challenging the validity of the trade mark registered in the name of the respondent. The Courts cannot close their eyes to the obvious intention of the parties and come to a conclusion by taking advantage of certain solitary provisions in the Act. As stated supra when the applicant have signed the Suit as well as the application on the same day and presented the Suit one day later than the day of the application sent to the Registrar of Trade Marks, it would speak volumes about the intention of the applicant in filing the application before the Registrar of Trade Marks. In these circumstances it has to be decided that the declaration given by the applicant that "No action concerning the trade mark in question is pending in any Court" in Form TM-26 is false to the knowledge of the applicant. In these circumstances it has to be decided that the declaration given by the applicant that "No action concerning the trade mark in question is pending in any Court" in Form TM-26 is false to the knowledge of the applicant. Therefore, the very fact on which two actions have been prepared by the applicant simultaneously would go to show the real intention of the applicant in presenting the application before the Registrar of Trade Marks. 9. The applicant have relied upon certain decisions, and all these decisions are in favour of staying of the Suit during the pendency of the application before the Registrar of Trade Marks. In Formica Internation Ltd. v. Caprihans (India) Pvt. Ltd., 1966 AIR(Calcutta) 247 the Calcutta High Court held that Section 111 seeks to prevent parallel enquiries in the same matter and as such if the defendant even before the filing of the written statement and before the trial pleads in any petition or affidavit that the registration of the plaintiff's trade mark is invalid he would be entitled to ask for a stay of the suit if the other conditions specified in the section are satisfied. In Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co., 1982 AIR(Delhi) 230 the Delhi High Court held that a suit for infringement of trademarks in which the contest between the parties is with regard to validity of registration of each other, can be stayed under Section 111 when rectification proceedings regarding the trademarks are pending. These two rulings are on different set of facts. We have seen how one suit and rectification application have been filed before the Registrar of Trade Marks by the applicant herein. Therefore, the mere provision that the suit can be stayed under Section 111 of the Trade and Merchandise Marks Act, 1958, cannot be taken advantage of by the applicant herein when they have not come to the Court with clean hands. In M/s. Elofix Industries (India) v. Steel Bird Industries and Others, it was held- "The registration of a trade mark or its cancellation prima facie is quite a different and distinct aspect than that of the user of a trade mark.... It is settled law that the order of the Registrar refusing an application for registration of the offending mark may not affect the issue in an infringement action. It is settled law that the order of the Registrar refusing an application for registration of the offending mark may not affect the issue in an infringement action. All these facts taken together leave no doubt in my mind that the defendant has been able to make out a case for the stay of the present suit." This decision though stands for the stay of the suit, the fact of the instant case is entirely dissimilar to the facts of the case in that decision, where the Deputy Registrar of Trade Marks held that the essential features of competing marks the words 'Steel Bird' and 'Elofic' which obviously are dissimilar. But, in the instant case, the facts are dissimilar and therefore the decision cannot be applied. 10. It is clear that the applicant herein have relied upon the ground of non-user of the trade mark by the respondent herein, however, while looking into the rectification application filed by the applicant herein before the Registrar of Trade Marks, would go to show that in Clause No. D they have alleged 'fraud' and other grounds also. Whether such grounds raised by the applicant herein will finally stand to the scrutiny of the Registrar of Trade Marks would be a different question altogether, at the same time we cannot presume the result of the rectification application at this stage. But the pending of the rectification application 11. The respondent herein have raised many other grounds regarding the legal authority of learned counsel Sri A.A. Mohan which will not attract our consideration to come to a fair and justifiable conclusion at this stage. 12. For the foregoing reasons the suit in C.S. No. 1148/1993 filed by the respondent herein being the registered user of trade mark OSSOPAN cannot be stayed and the application filed by the applicant is liable to be dismissed. In the result Application No. 368/1994 is dismissed but without costs in the circumstances of the case.