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.

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