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Sun Pharma Laboratories Ltd. v. Cian Healthcare Ltd. And Another

Delhi High Court
May 1, 2023
Judgment
Subsequent
References
CaseIQ
Case Information
CITATION CODES
citation codes
CASE NO.

CO. (COMM. IPD-TM) 723/2022 and I.A. 12360/2022 (O-XXVIR-9 of CPC)

JUDGES

Justice Amit Bansal

ACTS

Section 18(1) of the Trade Marks Act, 1999

Rule 7(ix) of Delhi High Court Intellectual Property Rights Division Rules, 2022

Section 57 of the Trade Marks Act, 1999

Section 2(1)(zg) of the Trade Marks Act, 1999

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Smart Summary (Beta)

Structured Summary of the Opinion (Amit Bansal, J.)

Factual and Procedural Background

The petition was filed under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the mark "MGalin" (Registration No. 3956223) in Class 5. The petitioner is a wholly owned subsidiary of Sun Pharma Industries Ltd., engaged in marketing drugs and pharmaceutical combinations internationally, and is the registered proprietor of the mark "Maxgalin" (No. 1402291) since 29 November 2005. "Maxgalin" is used for a Schedule H drug to relieve neuropathic pain and the petitioner alleges substantial goodwill, reputation and significant sales under that mark.

The respondent no. 1 is a company based in Pune engaged in selling medicines and is the registered proprietor of the impugned mark "MGalin". The petitioner alleges that respondent no. 1 obtained registration by making a false user claim (claiming user since 7 January 2003). Notice in the petition was issued on 4 August 2022, respondent no. 1 was served on 8 November 2022, and a last opportunity to file a reply was given on 14 February 2023. The respondent did not file a reply and the right to file was closed on 12 April 2023. On the date of hearing none appeared for respondent no. 1. Written submissions were filed on behalf of the petitioner.

Legal Issues Presented

  1. Whether the registration of the mark "MGalin" (Regn. No. 3956223, Class 5) should be cancelled under Section 57 of the Trade Marks Act, 1999 on the ground that it was obtained by a false statement as to user.
  2. Whether the impugned mark "MGalin" is deceptively similar to the petitioner's registered mark "Maxgalin" such that there is a likelihood of confusion in the market (visual, phonetic and structural similarity) when both marks are used in Class 5 for drugs treating the same ailment.
  3. Whether the respondent's claimed date of user (7 January 2003) is credible, given the respondent's incorporation date and failure to produce evidence of user to the Trade Marks Registry or to the Court.

Arguments of the Parties

Petitioner's Arguments

  • The petitioner has been the registered proprietor and user of "Maxgalin" since 2005 and has acquired goodwill and reputation through continuous use.
  • The respondent applied for registration of "MGalin" in 2018 but gave a false user date of 7 January 2003 to defeat the petitioner's registration and use.
  • No evidence was produced by the respondent to substantiate the claimed user of the impugned mark since 2003.
  • The impugned mark "MGalin" is deceptively similar to "Maxgalin" (by visual, phonetic and structural comparison), and both are used in Class 5 for medicines treating the same ailment, creating a likelihood of confusion.
  • The registration of "MGalin" should be cancelled because it was obtained by a false statement as to user; petitioner relied on authorities including Suresh Kumar Jain v. Union Of India & Anr. and Shri Adepu Surrender v. Adepy Ramaiah Narayana.
  • The respondent has failed to file a reply despite being afforded multiple opportunities.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
Suresh Kumar Jain v. Union Of India & Anr., 2012 SCC OnLine Del 12 Cited by the petitioner in support of the proposition that a registration obtained by a false statement as to user can be challenged/cancelled. The petitioner placed reliance on this authority in submissions. The court accepted the petitioner's case that the impugned registration was obtained by false statement as to user and ordered cancellation/removal of the mark.
Shri Adepu Surrender v. Adepy Ramaiah Narayana, 2012 SCC OnLine IPAB 60 Cited by the petitioner as authority concerning consequences where a registration is obtained by false statement as to user and the proprietor status under Section 18(1) of the Trade Marks Act. The court referred to this authority (noted as "supra") in support of the proposition that once registration is shown to have been obtained through a false statement of user, the respondent cannot claim to be proprietor within the meaning of Section 18(1). This supported the court's conclusion to cancel/remove the registration.

Court's Reasoning and Analysis

The court heard the petitioner's counsel and examined the record. The analysis proceeded in the following steps, drawn from the reasoning in the opinion:

  1. Procedural default: The respondent no. 1 failed to file a reply/counter-statement within the period prescribed by the Court and in terms of Rule 7(ix) of the Delhi High Court Intellectual Property Rights Division Rules, 2022. As the respondent did not take steps to contest the petition, the court treated it as having no defence on the merits (paras 9 and 5–6 of the record).
  2. Comparison of marks: The court compared the competing trademarks and found "MGalin" to be deceptively similar to "Maxgalin" — visually, phonetically and structurally — noting that respondent no. 1 had effectively omitted the letters "AX" from the petitioner's mark (para 10).
  3. Overlap in goods/use: Both marks are used in Class 5 for drugs treating the same type of ailment (neuropathic pain), which increases the likelihood of confusion in the market (para 10).
  4. Dishonest adoption and trading on goodwill: The court concluded that adoption of "MGalin" by respondent no. 1 was a dishonest attempt to trade on the petitioner's goodwill and reputation in "Maxgalin" (para 11).
  5. False user claim and lack of evidence: The court found it unclear why respondent no. 1 claimed user from 7 January 2003 yet only applied for registration in 2018. No evidence was produced by respondent no. 1 to substantiate use since 2003, and the date claimed coincided with the respondent's date of incorporation; this suggested the claimed early user date was falsely adopted to overcome the petitioner's prior use/registration (paras 12–13).
  6. Legal consequence: Given the finding that the registration was obtained through a false statement as to the date of user, the respondent cannot properly claim to be proprietor within the meaning of Section 18(1) of the Trade Marks Act, 1999. The court referenced Shri. Adepu Surrender in support of this legal consequence (para 13).
  7. Relief: On that basis, the court directed removal of the impugned registration from the Register of Trade Marks (para 14) and directed that a copy of the order be supplied to the Trade Marks Registry by the Registry (para 15).

Holding and Implications

Core Ruling: The court ordered that the impugned mark "MGalin" bearing Registration No. 3956223 in Class 5, registered in favour of respondent no. 1, be removed from the Register of Trade Marks forthwith (paras 14–15).

Implications:

  • The immediate, direct effect is the cancellation/removal of Registration No. 3956223 for "MGalin" in Class 5 and the direction to the Registry to communicate the order to the Trade Marks Registry for compliance.
  • As stated by the court, because the registration was established to have been obtained by a false statement as to date of user, respondent no. 1 cannot claim proprietary rights in the mark within the meaning of Section 18(1) of the Trade Marks Act, 1999 (para 13).
  • The opinion does not discuss or pronounce any broader principle beyond the application of the law to the facts before the court; the decision's immediate consequence is the removal of the impugned registration in this matter.

Note: This summary is limited strictly to the information contained in the provided opinion. Where the opinion did not supply additional detail (for example, written evidence filed by the respondent or extended discussion of broader legal consequences), that information has not been added or inferred.

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Amit Bansal, J. (Oral):— The present petition has been filed under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the mark “MGalin” bearing Registration No. 3956223 in class 5.

Factual Matrix

2. The case set up in the petition is as under:

2.1. The petitioner is a wholly owned subsidiary of Sun Pharma Industries Ltd. The petitioner is engaged in the business of marketing drugs and pharmaceutical combinations in over 150 countries with 45 manufacturing sites located in various countries.

2.2. Petitioner is the registered proprietor of the trademark “Maxgalin” bearing No. 1402291 since 29 November, 2005 and various other marks, details of which are provided in paragraph 12.7 of the petition.

2.3. The “Maxgalin” mark is used by the petitioner for its medicine used to relieve neuropathic pain. The said drug is sold in the form of tablets and is a Schedule H drug.

2.4. The trademark “Maxgalin” has also acquired goodwill and reputation due to its extensive and continuous use since 2005 and has therefore attained the status of a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

2.5. The sales turnover of the petitioner from the year 2012-2013 to the year 2020-2021, for the pharmaceutical preparation sold under the mark “Maxgalin,” is Rs. 383,28,66,000/-. In the year 2020-2021 alone, the sales turnover of the petitioner in relation to the aforesaid mark was Rs. 52,32,23,000/-.

2.6. The respondent no. 1 is a registered company operating out of Pune and engaged in the business of selling medicines.

2.7. The respondent no. 1 has gotten registered the impugned mark “MGalin” on the basis of a false user claim.

2.8. Accordingly, the petitioner has filed the present petition.

Proceedings in the Case

3. Notice in the present petition was issued on 4 August, 2022 and pursuant thereto, respondent no. 1 stood served through ordinary mode on 8 November, 2022.

4. On 14 February, 2023, last opportunity of four weeks was afforded to the respondent no. 1 to file reply to the cancellation petition. Since the respondent no. 1 failed to file any reply to the petition, the right of the respondent no. 1 to file reply was closed on 12 April, 2023.

5. Today, none appears on behalf of the respondent no. 1 even on the second call.

6. Written submissions have been filed on behalf of the petitioner in the suit.

Submissions on behalf of the Petitioner

7. The following submissions have been made on behalf of the petitioner:

7.1. The petitioner has been the registered proprietor and user of the mark “Maxgalin” since 2005.

7.2. The respondent no. 1, in order to defeat the effect of registration in favour of the petitioner, applied for registration of the impugned mark “MGalin” in 2018 with a false user date of 7 January, 2003.

7.3. No evidence has been provided by the respondent no. 1 as regards use of the impugned mark since 2003.

7.4. The respondent no. 1 has failed to rebut the assertion of the petitioner that the respondent no. 1 has made a false user claim.

7.5. The registration granted in favour of the respondent no. 1 should be cancelled since it has been obtained by making a false statement as to user. Reliance in this regard is placed on the judgment in Suresh Kumar Jain v. Union of India, 2012 SCC OnLine Del 12 and Shri Adepu Surrender v. Adepy Ramaiah Narayana, 2012 SCC OnLine IPAB 60.

7.6. The impugned mark “MGalin” is deceptively similar to the mark “Maxgalin”.

7.7. The respondent no. 1, by registering and using the impugned mark, is attempting to capitalize on the goodwill and reputation of the petitioner under the “Maxgalin” mark.

7.8. Despite being given a final opportunity to respond to the matter, the respondent has failed to file a reply.

Analysis and Findings

8. I have heard the counsel for the petitioner and examined the record of the case.

9. In the present case, the respondent no. 1 has failed to file reply/counter-statement within the period prescribed by the Court, in terms of Rule 7(ix) of Delhi High Court Intellectual Property Rights Division Rules, 2022. Since the respondent no. 1 has failed to take any requisite steps to contest the present petition, it is evident that the respondent no. 1 has no defence to put forth on merits.

10. It is clear from a comparison of the competing marks that the mark “MGalin” is deceptively similar to the mark “Maxgalin,” being visually, phonetically and structurally similar to the latter. The respondent no. 1 has merely dropped the letters “AX” from the registered mark of the petitioner. Not only are the marks deceptively similar but their use in class 5 for the drugs being sold under the two marks is also for treating the same type of ailment. Therefore, there is a likelihood of confusion in the market between the drugs under the two trademarks.

11. From a perusal of the material on record, it is clear that the adoption of the impugned mark by the respondent no. 1 is a dishonest attempt to trade upon the goodwill and reputation of the petitioner. Therefore, the aforesaid registration granted in favour of the respondent no. 1 is liable to be cancelled under Section 57 of the Trade Marks Act, 1999.

12. Further, it is unclear as to why the respondent no. 1 filed an application for registration of the impugned mark only in 2018 when it had been using the impugned mark since 7 January, 2003. Since no evidence has been furnished in support of the date of user claimed by the respondent no. 1, it appears that the registration application of the respondent no. 1 was filed with the claimed date of user as 7 January, 2003 merely to overcome the use and registration of the petitioner. In fact, the date of 7 January, 2003 is actually the date of incorporation of the respondent no. 1.

13. The respondent no. 1 has failed to rebut the assertion of the petitioner that the registration of the impugned mark “MGalin” was obtained on the basis of a false statement of user since 7 January, 2003. No evidence was filed by the respondent no. 1 before the Trade Marks Registry in support of its user of the impugned mark since 2003. Once it is established that the subject registration has been obtained through a false statement as to the date of user, the respondent no. 1 cannot claim to be a proprietor of the impugned mark within the meaning of Section 18(1) of the Trade Marks Act, 1999. Reference in this regard may be made to the judgment in Shri. Adepu Surrender (supra).

14. Accordingly, the respondent no. 2, Trade Marks Registry is directed to forthwith remove the impugned mark ‘MGalin’ bearing Registration No. 3956223 in class 5 in favour of the respondent no. 1 from the Register of Trade Marks.

15. The Registry is directed to supply a copy of the present order to the Trade Marks Registry at the e-mail address llc-ipo@gov.in for compliance.

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