Prior Use V. Prior Registration: Trademark Law

What is the difference between a trademark that has been used before and one that has been registered before? The Intellectual Property Appellate Board, which will be called "the IPAB" from now on, has looked into one of the most talked-about issues in trademark law: prior use and prior registration. In the case Mandom Corporation v. Fem Care Pharma Ltd. & Ors., the IPAB brought up different parts of trademark law, such as locus standi, the burden of proof, and res judicata.

The application was made by the Japanese company Mandom Corporation, which makes and sells products for the hair and skin. Since 1978, the applicant has always used the "GATSBY" trademark for its goods in class 03, which falls under that class. The applicant's product sells well around the world in places like Singapore, the United States, etc. The applicant wanted to register the "GATSBY" trademark in India and did so in 2006. The registration number for this was 830235. The applicant's facts and figures show that the trademark "GATSBY" has helped them build their reputation, goodwill, and brand equity over such a long time.

On the other hand, Fem Care Pharma Ltd. is an Indian company that is a branch of Dabur India Ltd. Fem Care Pharma Ltd. tried to get a trademark for the same "GATSBY" mark in classes 03 and 05. The company was given these registrations with the registration numbers 635739 and 635744.

The applicant filed a request to change the trademark number 635739 in class 03 to something else. The IPAB, on the other hand, turned down the application. The applicant went to the Bombay High Court because he didn't like what IPAB had said. So, a second petition to fix something was sent to the IPAB. The IPAB didn't like the second rectification application because the Bombay High Court was already looking into the case. In the meantime, the High Court made it clear that even though the matter was pending before it, that could not be a reason for IPAB not to hear the rectification application.

The IPAB accepted the second rectification application, but noted that it can only be kept up if it meets the requirements of Section 47 (1). (b). Dabur India Ltd. said that the applicant company's application can't be considered because of the principle of res judicata. Also, Dabur India Ltd. filed a suit against the applicant for infringement. The case brought up the following points:

• Would Res judicata be used in the situation at hand?

• Did the person who filed the application have the right to do so?

• Who has to prove that the trademark hasn't been used?

• On what grounds can the IPAB decide that prior use is better than prior registration?

COURT'S RULING:

The Dabur company sued the applicant, but the court threw out the case because no products with the trademark in question had been sold between the filing date and the date of the current suit. The court came to the following conclusion about the first four points:

1. PRINCIPLE OF RES JUDICATA

According to Section 13 of the Code of Civil Procedure from 1908, "Res judicata" means that a case that has already been decided by a court of law on its merits cannot be filed again by the same parties over the same subject. In this case, a new application for correction was submitted in 2013 for a different time period. In its order, the Bombay High Court also said that the trademark in question had not been used from 1994 to 2014. So, the principle of res judicata does not apply in this case, and IPAB was given the chance to hear the case and make a decision.

2. LOCUS STANDI

In the case Kellogg Company v. Pops Food Products P Ltd., the Hon'ble High Court of Delhi ruled that if it can be shown that the applicant was in the same business as the person who registered the mark, and if the trademark, while still in the registry, can limit the applicant's legal rights or stop him from doing something he could have done legally, he has the right to be heard as an injured party.

3. BURDEN OF PROOF

Even though the IPAB agreed with the decisions submitted by Dabur Ltd., which said that the party making the claim has to prove it, the applicant for rectification has to prove it. On the other hand, if the owner has already shown proof of use, it is up to the applicant to show that it is still being used. It is a well-known rule of law that if there is no evidence, it is up to the owner to show otherwise. But since Dabur Ltd. admitted that the registered trademark wasn't being used, Section 47(1)(b) says that the Dabur company has to prove its case.

4. PRIOR REGISTRATION v. PRIOR USE

In 2003, Fem Care Pharma Ltd. was able to successfully get a trademark. The applicant said that since the respondent hadn't used the trademark yet, he or she had no right to do so. But the respondent said they had done a lot of research and were about to start selling their products. Since there was no proof that Dabur Ltd. had used the mark, the IPAB decided that just registering the mark does not count as using the mark.

Even though the applicant filed the application to register the trademark in 1998, it was decided in the case of Sunder Parmanand Lalwani v. Caltex (India) Ltd. that the Trade Marks Act does not apply outside of India and that "use" means "use" in India, not abroad.

Based on these reasons, the IPAB decided that Dabur Ltd. did not have a good reason to remove the applicant's mark, and that the applicant does not own the mark. Putting in an application earlier would not be enough. Also, Dabur Ltd. had no real plans to use the disputed mark in business or for any other commercial purpose, so the IPAB ordered that the mark be taken off the register and let the applicant's application go through.

AUTHOR - ANANTA KASHYAP