The two pharmaceutical companies, Mankind Pharma Limited (Petitioner), and Micro Labs Limited, (Respondent) are at loggerheads over the trademarks "DOLOBAN" and "DOLOBENE," both associated with pharmaceutical products. The petitioner sought to invalidate the respondent’s registration of "DOLOBENE," claiming it closely resembled their earlier trademark, "DOLOBAN." The case involves issues such as prior usage rights, the necessity of continuous use, the doctrine of acquiescence, and the exclusive privileges granted to registered trademark owners.

Background of the case

  • The petitioner initially registered the trademark "DOLOBAN" in 1994, claiming use since 1993. However, the registration lapsed in 2004 due to non-renewal.
  • In 2004, the respondent registered the trademark "DOLOBENE," asserting use since 2000.
  • In 2007, the petitioner filed a fresh application for "DOLOBAN," claiming continuous use since 1993, which the respondent opposed, leading to ongoing proceedings before the Trademark Registry.
  • The petitioner specifically objected to the use of "DOLOBENE," arguing it was deceptively similar to "DOLOBAN" and could cause confusion, especially since both parties operate in the pharmaceutical sector.
  • The petitioner contended they were the prior user of "DOLOBAN," having used it since 1993, while the respondent only began using "DOLOBENE" in 2000.

Key issues and Court findings

The court framed the following issues:

  1. Similarity Between "DOLOBAN" and "DOLOBENE": Whether the respondent's trademark "DOLOBENE" was similar to the petitioner's prior-adopted "DOLOBAN."
  2. Violation of Section 57: Whether the registration granted to the respondent violated Section 57 of the Trademarks Act, 1999 and was thus liable to be cancelled.
  3. Allegation of Infringement: Whether the respondent's use of "DOLOBENE" constituted trademark infringement.
  4. Prior Usage: Whether the petitioner had prior rights over "DOLOBAN" compared to the respondent's "DOLOBENE."

Arguments by Mankind Pharma:

  • Mankind Pharma argued that they are the prior user of the Trademark 'DOLOBAN' and that 'DOLOBENE' is deceptively similar, causing confusion among consumers. They sought rectification/cancellation of 'DOLOBENE' under Section 57 of the Trademarks Act.
  • They also highlighted that Micro Labs admitted the deceptive similarity of the marks in their opposition petition and that the Trade Marks Registry arbitrarily granted registration for 'DOLOBENE’.
  • Mankind Pharma presented invoices to establish continuous use of 'DOLOBAN' since 1993 and argued that Micro Labs cannot take inconsistent stands.

 

Arguments by Micro Labs:

  • Micro Labs contended that the petition is barred by acquiescence and delay under Section 33 of the Trademarks Act, as Mankind Pharma filed the rectification application 14 years after the registration of 'DOLOBENE’.
  • They argued that Mankind Pharma did not satisfy the conditions under Section 57 of the Act and that the petition is not maintainable.
  • Micro Labs also claimed exclusive rights to the 'DOLO' series of Trademarks, having used 'DOLO 650' since 1986

Court's Analysis:

  1. Delay in Filing the Petition: The petitioner, Mankind Pharma Limited, filed the application for rectification under Section 57 of the Trademarks Act, 1999, only in 2014, which was almost 14 years after the registration of the Trademark 'DOLOBENE' by Micro Labs Limited in 2001. This significant delay was a key factor in the court's decision.
  2. Knowledge and Inaction: The court noted that Mankind Pharma Limited, being in the same pharmaceutical industry, was aware of the usage of the Trademark 'DOLOBENE' by Micro Labs Limited. Despite this knowledge, Mankind Pharma Limited did not take any action against the use of 'DOLOBENE' for more than five years. This inaction was seen as an encouragement to Micro Labs Limited to continue using the Trademark.
  3. Section 33 of the Trade Marks Act, 1999: According to Section 33, if the proprietor of an earlier Trade Mark has acquiesced for a continuous period of five years in the use of a registered Trademark, being aware of that use, they are no longer entitled to apply for a declaration that the registration of the later Trademark is invalid or to oppose the use of the later Trademark. The court found that Mankind Pharma Limited's inaction for 14 years constituted acquiescence under this provision.
  4. Encouragement through Inaction: The court emphasized that acquiescence involves not just silence or inaction but a course of conduct inconsistent with the claim for exclusive rights in a Trademark. By not objecting to the use of the mark 'DOLOBENE' for such a long period, Mankind Pharma Limited effectively encouraged Micro Labs Limited to continue using the Trademark.
  5. Good Faith Usage by Micro Labs Limited: The court also considered that Micro Labs Limited had been using the Trademark 'DOLOBENE' in good faith and had invested time, money, and effort in developing their business and brand. The law of acquiescence aims to protect such investments made in good faith.

Conclusion:

  • The court dismissed the petition, stating that Mankind Pharma cannot claim prior usage of 'DOLOBAN' due to the lack of continuous use and failure to renew the trademark registration. The invoices presented were not sufficient without oral evidence to prove continuous use.
  • The court emphasized the need for trademark owners to be vigilant and take timely action to protect their trademarks.