Pharma mark prior user unsuccessful in passing off action

In a decision published last month, the Mumbai High Court held that it is conceivable for a plaintiff to obtain an injunction in a passing off action on the basis of prior use of a mark notwithstanding the earlier registration of the same mark by the defendant (Case 3528 of 2006, January 31 2007).

In this rather unusual case, Cipla Limited applied to register the mark GRANISET in respect of pharmaceutical and medicinal preparations on February 26 1998. The application matured to registration on April 4 2005. Before Cipla's application was granted registration, Sun Pharmaceuticals Industries Limited also applied to register the mark GRANISET on December 31 1999 and commenced use thereof on December 1 2000. Cipla commenced use of its GRANISET mark after its application was granted registration in July 2006. Sun Pharmaceuticals initiated a passing off action seeking an injunction against Cipla's use of the mark GRANISET on the basis of its own prior use of the mark. Sun Pharmaceuticals contended that it was entitled to an injunction notwithstanding the subsequent registration of the mark in its name pursuant to Section 27(2) of the Trademarks Act 1999 which provides that:

"nothing in this act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

The Mumbai High Court held that a prior user can sustain a passing off action notwithstanding the earlier registration by the defendant. However, the court declined to grant an interlocutory injunction in this case because Sun Pharmaceuticals had failed to establish that its adoption of the mark GRANISET was completely innocent and honest, and that at the time it started using the mark, it was unaware and did not have knowledge of Cipla's mark. Sun Pharmaceuticals had not adduced evidence about any search that it may have initiated before adopting the mark GRANISET and since Cipla had already applied to register the same mark when Sun Pharmaceuticals commenced its use, Sun Pharmaceuticals must be considered to have had knowledge of Cipla's mark under the principles of res ipsa loquitur.

Mustafa Safiyuddin, DSK Legal, Mumbai