Madhya Pradesh High Court
Himalaya Drug Co. Pvt. Ltd., Bangalore vs Arya Aushadhi Pharmaceutical Works, ... on 19 February, 1999
Equivalent citations: AIR1999MP110, AIR 1999 MADHYA PRADESH 110, (1999) 2 ARBILR 528
Author: Shambhoo Singh
Bench: Shambhoo Singh
JUDGMENT Khan, J.
1. Appellant is a manufacturer of pharmaceutical preparations, drugs and chemicals. So is the respondent. Both are fighting it out on a Trade Mark for the last twenty five years or so.
2. Appellant claims that it was given right to use Trade Mark of 'SAPTLIN' and 'SEPTILIN', a medicine used for treating tonsillitis and other respiratory disorders by its licensors M/s. Himalaya Drug Co. vide registered user agreements dated 29-6-1971 and 9-6-1972. It learnt somewhere in 1973 that respondent had also launched a preparation called 'PEPTILIN' which was used to cure peptic ulcer and other connected diseases. A notice was accordingly issued to it to desist from doing so and on its failure C.O.S. No. 1-A was filed for perpetual injunction restraining it from using Trade Mark 'PEPTILIN' and for other incidental damages and destruction of all material etc. The suit was resisted by respondent on various grounds leading to framing of a number of issues of which only issue No. 1(c) which is material for our purposes is reproduced hereunder:--
"Have the agreements of registered users been registered with Registrar of Trade Marks and the plaintiffs are named as registered users of the said Himalaya Drug Company in the records of Registrar of Trade Marks."
3. The trial Court decided this issue in favour of appellant and decreed the company's suit. But respondent filed F. A. No. 81 /78 assailing the trial Court finding on the issue as being unsupported by evidence. It found favour with First Appellate Court and the crucial issue was found to have been decided without any evidence. The suit was accordingly dismissed. Appellant has filed this L.P. A. now assailing the judgment passed by the First Appellate Court and all that remained to be seen was whether the finding recorded by trial Court could be said to be perverse.
4. Before embarking on an appraisal of evidence on record it becomes necessary to refer to some relevant provisions of the Trade & Merchandise Marks Act, 1958 to know the requirements for filing such a suit. Section 2(q)(r)(s) defines "registered proprietor," "registered Trade Mark" and "registered user" respectively. "Registered proprietor" is a person who is entered in a register as a proprietor of the Trade Mark. "Registered Trade Mark" is a Trade Mark which is actually entered on the register. "Registered user" means a person who is for the time being registered Under Section 49. Section 48 of the Act deals with the registered users and Section 49 with the procedure for obtaining such registration by the registered users. It envisages that both registered proprietor and registered user shall make a joint application to the Registrar in writing and in prescribed manner for such registration.
5. Chapter IV of the Act deals with effect of registration and Section 28 thereunder postulates that such registration shall give the registered proprietor of the Trade Mark exclusive right to the use of such Trade Mark and to obtain relief in respect of infringement of the Trade Mark in the manner provided by this Act. Section 52 makes an exception to this and permits the registered user of the Trade Mark also to take proceedings to prevent infringement of such Trade Mark on satisfying the requirements laid down therein. The relevant section which assumes crucial importance in the matter is extracted hereunder:--
"A bare perusal of the provision would show that the registered user of the Trade Mark shall be entitled to call upon the proprietor of such Trade Mark to take proceedings to prevent infringement thereof and if such registered proprietor refuses or neglects to do so within three months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, making the proprietor a defendant."
6. Going by the relevant provisions of the Act, it is firstly proprietor of a Trade Mark who can maintain a suit for infringement of such Trade Mark. The registered user could also do it but only after registered proprietor would neglect it or refuse it within three months from the date of having been called upon to do so. The prerequisite was that the suit could be maintained only by registered proprietor or registered user. An unregistered user, was disqualified from filing the suit. In the present case there is no clue in the plaint that appellant had approached the proprietor for preventing the alleged infringement and it was on his failure to do so within the time prescribed that it was constrained to launch the suit. That apart, there is nothing to show on record that appellant company had sought registration of the Trade Mark in question in accordance with the provisions of Section 49 or that it was so registered. It had not produced any certificate or extract of entry from the relevant register in support to show that it was a registered user. All it harped on was that it had assumed the status of registered user by virtue of registered user agreements executed by the proprietor of the Trade Mark. The trial Court also appears to have misunderstood the requirement to return a finding which makes an interesting reading and deserves to be quoted hereunder:--
"It is thus, proved that Himalaya Drug Co. permitted the use of the said Trade Marks to the plaintiff by the agreement of the registered users dated 29-6-1971 and 9-6-1972. The said agreement of registered users have been registered with the Registrar of Trade Marks and plaintiff's name is registered as users of the said Trade Marks of Himalaya Drug Co. in the records of the Registrar of Trade Marks."
7. It is not known how the trial Court had recorded this finding without any supporting material on record to suggest that appellant had applied for registration as registered user of the Trade Mark or for that matter the user agreements executed between the proprietor and the company had clothed it with any such status. The trial Court had manifestly fallen in error in doing so without any evidence on record. Its finding was thus rightly characterised perverse by the First Appellate Court.
8. There is no dispute that only registered proprietor of the Trade Mark or a registered user of the Trade Mark could launch proceedings to prevent its infringement. If the user was not registered he could not maintain a suit Under Section 51. Thus we hold that appellant's suit was rightly dismissed by the Appellate Court because the company had failed to prove that it was a registered user and that trial Court had returned a finding in this regard without any evidence on record. We accordingly affirm the impugned judgment of the First Appellate Court to dismiss this appeal.