MEDICAL TECHNOLOGIES LTD. Vs. NEON LABORATORIES PVT. LTD.

JUDGEMENT

(1.) THE present application is for removal of the Trade Mark No. 583227, registered in the name of the respondent No. 1, from the register of trade marks or rectification of the register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

(2.) IT is stated that the applicant is engaged in the business of manufacturing and marketing pharmaceutical and medicinal preparation. The applicant, Gujarat Technologies Ltd., originally incorporated on 22.6.1993 under the Companies Act, 1956 have changed its name to Medical Technologies Ltd. Amongst the various pharmaceutical products manufactured and marketed by the applicant, have got the trade mark PROFOL which was introduced in India by the predecessor of the applicant and have made application to the Drugs Controller India and have got the Product Permission dated 2.5.1998 from the Commissioner of Food and Drugs Control Administration, Gujarat State. Hematal Biologicals Ltd., the predecessor of the applicant, have coined and invented the mark PROFOL in the year 1998 and subsequently, thereafter, from time to time has given license to use the mark PROFOL to different companies. Hematal Biologicals Ltd., the predecessor of the applicant, gave license to use the trade mark PROFOL for the purposes of manufacturing, marketing, selling and advertising the pharmaceutical product to M/s. Claris Lifesciences Limited by way of License Agreement to Use Trade Mark dated 1.4.1999. The applicant company, as per the order dated 17.2.2000 of the High Court of Gujarat in Amalgamation Company Petition No. 294/1999 (Scheme of Amalgamation of Hematal Biologicals Ltd. with Medical Technologies Ltd.), has become the owner of trade mark PROFOL. The applicant gave license to Claris Lifesciences Ltd. (a company originally incorporated on 19.7.1994 as Oracle Laboratories Ltd., which underwent change on 31.3.1999 to Core Laboratories Ltd., and on 1.4.1999 to Claris Lifesciences Ltd.) to manufacture the products under the said trade mark and thus the applicant has used the mark since 2000 openly, continuously and uninterruptedly in the field of pharmaceutical and medicinal preparation. The mark PROFOL has been granted drug manufacturing permission in various countries and the mark is registered in India and is under registration in various other countries. It is further stated that the predecessor of the applicant, Hematal Biologicals Ltd., filed application No. 803692 dated 24.5.1998 in class 05 for registration of trade mark PROFOL and the predecessor of the applicant in the year 1999 has given a license to use the said mark to Claris Lifesciences Ltd. In view of change in the proprietorship of the mark, the predecessor in title i.e. Hematal Biologicals Ltd. had assigned the mark in favour of the applicant and the Form TM -16 dated 13.10.2001 filed for amending the name of the applicant as proprietor of the mark is pending before the Registrar of Trade Marks.

(3.) IT is the case of applicant that the respondent No. 1, which is also engaged in same business as that of the applicant, have applied on 19.10.1992 for registration of trade mark ROFOL word per se in respect of pharmaceutical and medicinal preparation and obtained registration under No. 583227 by making false statement before the Registrar of Trade Marks about their intension to use the mark. The respondent No. 1 started manufacturing and marketing its products only in the year 2004 with identical or deceptively similar mark and thereby created confusion and deception in the market and the applicant had to file a Civil Suit No. 1244/2005 before the City Civil Court of Ahmedabad for passing off action and account of profit earned and had also prayed for interim order of injunction, which was granted by the court and the respondent No. 1 was restrained from using the trade mark ROFOL and committing an act of passing off their products under the mark ROFOL as and for the applicant's goods under the trade mark PROFOL. The respondent No. 1 has gone in appeal before the High Court of Gujarat against the order of the City Civil Court and the Hon'ble High Court after hearing the appeal in detail dismissed the same on 19.12.2005. After completion of arguments in the appeal, the respondent No. 1 realised that they will not succeed in appeal, hence they moved the High Court of Bombay by a civil suit No. 3419/2005 filed on 14.5.2005 and have prayed for interim injunction against the applicant herein on the basis of the registered trade mark under No. 583227. The applicant has appeared before the High Court of Bombay and filed their reply and the matter is kept for hearing.