Saga Life Sciences Limited (Saga) sold a pharmaceutical paracetamol preparation ULTRAMOL after obtaining approval of Food and Drug Controller Authority (FDCA), Gujarat on 28th November 1991. The product was listed on e-commerce platforms as well as on the website of the company. Saga applied for the trademark “ULTRAMOL 650” in 2007 and claimed a prior use since 1992. The application was abandoned because of some misunderstanding with the Trademark Agent and subsequently, Saga re-applied for registration of the trademark “ULTRAMOL” on 16th October 2019 in class 5 which was opposed by Aristo Pharmaceuticals Pvt. Ltd.
Aristo Pharmaceuticals Pvt. Ltd. (Aristo) is also into manufacture and sale identical products as those of Saga. Aristo had filed an application in 2005 in class 5 for the registration of the mark "ULTRAMOL" on 'proposed to be used' basis. Currently, the aforementioned application bearing no. 1380082 is 'opposed' by various third parties.
It came to the knowledge of Saga that Aristo was using the mark "ULTRAMOL" on a standalone basis on its products, both on the blister packaging as well as on the outer cartons however; Aristo had sought registration from the Drug Authority of Daman and Diu and Pondicherry for products under the mark "ARISTO ULTRAMOL".
Saga approached the Delhi High Court seeking permanent injunction against Aristo from manufacturing and use of the mark “ULRAMOL” as well as rendition of accounts and damages for passing off.
Saga claimed to be the prior user of the mark "ULTRAMOL" and in order to bolster its claim, produced evidence in the form of invoices, sales figures, and drug license since 1991, showing prior use of the mark even though the application for trademark registration filed in 2007 was abandoned. Saga contended that Aristo had obtained approval for selling pharmaceutical preparations “ARISTO ULTRAMOL” however it indulged in misbranding its drug to “ULTRAMOL” which was in violation of Drugs and Cosmetics Act 1940.
Aristo countered that Saga had acquired neither goodwill nor reputation in India as it did not sell the product in India. Aristo submitted that, Saga had been exporting entire stock of the pharmaceutical product with the mark “ULTRAMOL” since 2014. Further, the e-platforms were not platforms for sale but merely listing platforms. Since Saga had abandoned the pharmaceutical sale under the mark in India, Aristo contended that, passing off law was not applicable in the case. Aristo informed that, their trademark search neither yielded any results for “ULTRAMOL” nor did it find any advertising material related to the mark. Since there was no sale of the pharmaceutical product of said mark in India and not being aware of Saga using the mark for their pharmaceutical products, Aristo negated the possibility of confusion in the minds of the consumers regarding the mark.
The Court after considering all the submissions and contentions of both the parties observed that since Aristo was aware of Saga’s trademark, it applied for drug approval under “ARISTO ULTRAMOL” instead of “ULTRAMOL”. The Court further observed that the marks were identical and used for similar pharmaceutical preparation. However, the issue for consideration before the Court was whether export of the pharmaceutical product and the pharmaceutical product not being sold in India since 2014, would tantamount to abandonment of the trade mark by Saga?
The Court perused Section 2(2) (i) of the Trade Marks Act, 1999 (Act) which lends a broader meaning to the use of a “mark”. While the section refers to the mark in any physical relation, it also refers to the same in any other relation whatsoever. Use of the words “in any relation whatsoever” in the Section, clearly lends a broader meaning for the use of a mark. The Court referred to the precedent in Hardie Trading Ltd. v. Addisons Paint and Chemicals for supporting the term ‘broader meaning’ wherein the Hon’ble Supreme Court of India had interpreted the meaning of 'use' in case of trademarks was not restricted to sale only, under Section 46(1) (b) of the erstwhile Trade and Merchandise Marks Act, 1958. The word ‘use’ was considered falling under an umbrella which would include actions not necessarily related to sale.
While examining the jurisdiction of the court under section 134 of the Act, the Court observed that, export of products would also constitute 'use of a mark.' The Court further observed that, manufacturing, assembling a product, advertisement would also constitute use of a trademark. Thus, even though the product was exported or if the product was not sold in India, neither did it mean that the mark was abandoned nor did it mean that the goodwill has perished.
The Court observed that prior use of “ULTRAMOL” by Saga was clearly supported by its invoices since 1992 and furthermore, Saga had not suggested anywhere that they did not plan to sell the product in India in future. Since, the Apex Court in Laxmikant V. Patel v. Chetanbhat Shah & Anr held that possible future activities in the application of law of passing off need to be reckoned with, the option of selling in the local market was open to Saga.
In light of the aforementioned observations, the Court in its judgement pronounced on 22nd April 2022 granted an interim injunction in favour of Saga and directed Aristo stop using the marks “ULTRAMOL”, “ARISTO ULTRAMOL’ or any other mark which was deceptively and/or phonetically similar to the mark of Saga. However, on considerate grounds, Aristo was permitted to manufacture the product and sell the same under any other mark. The matter is listed for further hearing on September 5th, 2022.
