Decision of Bombay High Court on common law right over the trademark

In a recent Decision of Bombay High Court in Medical Technologies Limited [-MTL] versus Neon Laboratories limited and Others 2012(51) PTC (Bom.) (DB)an interesting interface of statutory right vis-a-vis a common law right over the trademark right arose.

The facts of the case were that MTL filed a writ petition before Court against the order of the Registrar dismissing their rectification petition file against Neon to expunge the mark "ROFOL" on the ground of non use of the mark. The main contention of the MTL was that Neon was not using the mark though having the registered certificate in the name of ROFOL since 1992, but started using the mark since 2004 only. They allege that the mark ROFOL of Neon is striking similar to their mark PROFOL which they claim that they have been using the same since 1998. MTL main claim rested on the ground that the use of the mark since 1998 by them gives better right to claim the proprietorship over the mark as per section 27 of the Trademarks Act, 1999, which itself is notwithstanding provision of the Act including Section 28 (-which confers right on registration of the mark). Their main crux was that that adoption without use cannot confer any better rights than actual use of the mark as Section 28, which grants the rights to registered holder itself is subject to other provision of the Act including Section 27. In crux common Law right in trademark which is substantiated by actual use of the mark must prevail over the statutory right if the registered proprietor fails to substantiate the use of the mark after the date of application and/or registration of the mark.

Pertinent to mention here that Neon application was dated 19.10.1992 and Neon was the registered holder of the mark and MTI started using the mark since 1998 only. It is well settled that the date of application is the date of registration of the mark and the registration accordingly takes effect retrospectively from the date of application only.

After considering various precedents and authorities in the present case while contemplating the respective rights of parties the Court held that the "... in the instant case , the contention canvassed by the Counsel for the Respondent No. 1 that in view of the prior claim of proprietorship of the mark by way of application to trademark Registry by the Respondent No.1, even though the claim is made is "proposed user" in the application, the Petitioner cannot claim superiority of right based on common Law principles in the mark by commencing the use of the mark subsequent to the date of registration of the respondent No.1's mark "ROFOL", has merit and sustainable in Law in view of the finding recorded in the foregoing paragraphs of this judgment"

The Court relied on the Apex court judgment of Meghraj Busicuit Industries Limited versus Comm. of Customs (2007) 11 SCC 780 and Mohan Goldwater Breweries (Private limited), Madras and held that that effect of registration making registered certificate applicable from the retrospective date is based on the principle of deemed equivalence to public user of such mark and accordingly held that since the Neon's registration of the mark ROFOL is w.e.f., 1992 only and by virtue of deeming fiction the mark is to be treated w.e.f, 1992 whereas the mark of MTL has been is use from 1998 only and is subsequent to the date of registration of Neon and therefore MTI cannot claim superior rights based on Common Law principles.

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