Emcure Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd.
In the Bombay High Court of Bombay
Plaintiff was proprietor of registered trademarks, OROFER and OROFER-XT. Defendant was using COROFER and COROFOER-XT.
• In 1996, the Plaintiff’s marks OROFER and OROFER-XT were registered.
• In 2006, the Plaintiff noticed the Defendant’s advertisement in the Trade Mark Journal towards registration of the mark COROFER in Class 5.
• In 2007, the Plaintiff’s attorneys sent a notice to the Defendant.
• Plaintiff then opposed the Defendant’s registration application on 20th December 2007
• Defendant claimed to have commenced use of its mark in 2001 for an iron supplement
• The Plaintiff then claims to have made enquiries but found no evidence of the Defendant’s products. The Plaintiff nonetheless continued its opposition in the trade mark registry.
• In May-June 2009, one of the Plaintiff’s dealer reported COROFER-branded products in the market. Plaintiff sent a second notice to the Defendant in 2009.
• Plaintiff then claims that it believed the Defendant had withdrawn its products from the market and ceased using the impugned trade mark. It was not till July 2013 that the Plaintiff learned that the Defendant had, again started manufacturing and marketing products under the impugned trade mark, but now also adding a suffix “XT” to the word COROFER.
• On 16th July 2013, the Plaintiff’s representative purchased the offending product in Mumbai under the brand COROFER-XT.
• The Plaintiff filed the suit on 7th September 2013.
Defendant’s marks infringe those of the Plaintiff.
The only invoices shown by the Defendant are from 2009 to 2013.1 There are a handful from 2001, but none of significance; and from 2006 to 2009 there is nothing at all. Thus, it is impossible to conclude that the Defendant has been actively using the rival marks on its products continuously and extensively.
If the defence to the Plaintiff’s action is one of acquiescence, then the Defendant must show that the Plaintiff had knowledge of the Defendant’s use; or that the Defendant’s use was of so extensive and widespread a nature that the Plaintiff could not possibly have been ignorant of it. There is no such material.
On the basis of the Defendant’s Contentions, the Hon’ble Court formulated the following Main Issues:
(a) Are the Defendant’s marks deceptively similar to those of the Plaintiff?
(b) Is the fact that there are other marks with the word (or letters) “FER” determinative, in that the use of this word or abbreviation by the Defendant cannot be said to constitute an infringement of the Plaintiff ‘s marks?
(c) Is the Plaintiff’s claim defeated by delay if such a delay is proved? If, along with this, the Plaintiff’s knowledge of the Defendant’s use is shown, has not the Plaintiff acquiesced in the Defendant’s use of its rival marks?
(d) Is Section 33 of the Act limited to a later registered trade mark?
(a) Answered in Affirmative.
There is no difference between the Defendant’s marks and the Plaintiff’s marks except for the addition by the Defendant of a preceding letter ‘C’. In all other respects, the Plaintiff’s marks are entirely subsumed in the Defendant’s rival marks. There can be no doubt that the Defendant’s marks in the present case are confusingly and deceptively similar to those of the Plaintiff.
(b) Answered in Negative.
The fact that there may be other marks with the term FER in them is inconsequential; the Defendant has itself sought registration of a mark with this very expression and can hardly be heard to say that this portion of the mark is not distinctive.
(c) Answered in Negative.
Mere delay will not defeat the rights of a registered proprietor. A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence. Acquiescence is a species of estoppel, a rule in equity and a rule of evidence. Essential to the acquiescence doctrine is that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator. Acquiescence is sitting by when another invades your rights and spends money in the doing of it. It is conduct incompatible with claims of exclusivity, but it requires positive acts, not mere silence or inaction. Acquiescence is not mere negligence or oversight. There must be the abandonment of the right to exclusivity. The Defendant shows no invoices. Between 2001 and 2006, its sales figures are almost entirely irrelevant. For 2006 to 2009, no invoices are shown at all. The first cease-and-desist notice was of 2007, the second of 2009. What remains is no evidence of use at all. There is nothing that the Plaintiff could possibly do to meet the charge of acquiescence. In any case, the very worst that the Defendant might say of the Plaintiff is that the Plaintiff was silent. But that is not enough to mount the challenge of acquiescence. It certainly cannot point to any positive or affirmative act that might have encouraged the Defendant to worsen its position.
(d) Answered in Negative.
That section only provides immunity to a registered proprietor of a trade mark after a defined period of time. It cannot be read to mean that no plea of acquiescence can be taken in any other set of circumstances. Section 33 operates in a well-defined and circumscribed set of circumstances. It cannot possibly oust every other plea of acquiescence. For instance, it is still open to a registered proprietor to show that there has been acquiescence for a period of four years and 364 days; this defence is not defeated for the want of one day. All that Section33 says is that where, as between two registered proprietors, the later registrant is able to show acquiescence of at least five years, certain statutorily mandated consequences follow. In other cases, the plea can well be taken, the only difference being that the statutorily mandated consequences in Sections33(1)(a), (b) and Section 33(2) would not necessarily result. This is also true when a plea of acquiescence is taken by a later proprietor of an unregistered mark.
The Defendant was injuncted from using the marks COROFER and COROFOER-XT.