M/S Bharat Biotech International Ltd. vs Optival Health Solutions Pvt. Ltd. & ... on 26 May, 2020
29. Mr. Sapra submitted that the defendant No.2's use of the
mark 'TCV' is not in the trade mark sense as envisaged in Section
29 of the Trade Marks Act, and is thus within the ambit of the law
CS(COMM) 1248/2018 Page 27 of 62
under Sections 35 and 30(2) of the Trade Marks Act. An action for
infringement under Section 29(1) of the Trade Marks Act, could
only be brought where the defendant uses a mark 'as a trade mark'
i.e. in a manner 'indicative of trade origin' (Ref:- Nestle v Mood
Hospitality, (2010 (42) PTC 14(Del), para 12). If a mark is not
being used in a 'trade mark sense' but merely in a descriptive
sense, it is covered in the exceptions under Section 30(2) and
Section 35 of the Trade Marks Act. If a defence of use of a
descriptive mark as an indication of kind, quality or characteristic
of goods (under Section 35) is to succeed, the term used is required
to be generic and that the use of the term be bona fide. It has been
held that if a sufficiently distinctive term is used along with the
descriptive term, the same would qualify as bona fide use. Thus,
the presence of the word 'ZYVAC' along with the descriptive
abbreviation 'TCV' in defendant No. 2's, makes the mark
'ZYVAC-TCV' sufficiently distinctive and clearly indicates the
bona fide intention of the defendant No. 2.