Statutory defence of acquiescence does not provide immunity to owners of unregistered marks

In Emcure Pharmaceuticals Ltd v Corona Remedies Pvt Ltd, the High Court of Bombay has granted an injunction restraining Corona Remedies Pvt Ltd from using the marks COROFER and COROFER-XT on the ground that they were similar to Emcure Pharmaceuticals Ltd’s earlier registered trademarks OROFER and OROFER-XT. 

Emcure’s product

The dispute arose in or about 2007 when Emcure became aware that Corona was using the mark COROFER, and issued a cease and desist notice to Corona. Another notice was sent in 2009, after which Emcure believed that Corona had withdrawn its products. In 2013 Emcure found out that Corona had again started using the mark COROFER-XT. It filed the present suit to, among other things, restrain Corona from using the marks COROFER and COROFER-XT.

In addition to the issues usually arising in an infringement and passing-off action, the statutory defence of acquiescence under Section 33(1) of the Trademarks Act 1999 was discussed at length, as Corona raised this defence  based on its alleged use of the COROFER marks since 2001. Section 33(1) of the act states as follows:

“Where the proprietor of an earlier trademark has acquiesced for a continuous period of five years in the use of a registered trademark, being aware of that use, he shall no longer be entitled on the basis of that earlier trademark to apply for a declaration that the registration of the later trademark is invalid or oppose the use of the later trademark.”

Corona also pointed that a company called Advent Laboratories was the prior user and registrant of the mark OROFER, compared to Emcure’s use and registration of that mark.

Countering Corona’s defence, Emcure contended that:

1. the statutory defence of acquiescence under Section 33(1) of the act is not available for the user of an unregistered trademark; and

2. under Section 28(3) of the act, two proprietors of registered marks do not have exclusive rights vis-à-vis each other, but have rights against third parties (Section 28(3) states: “Where two or more persons are registered proprietors of trademarks, the exclusive right to the use of any of those trademarks shall not be deemed to have been acquired by any one of those persons").

In response to Emcure’s contentions, Corona alleged that Section 33(1) is also applicable to unregistered marks since, under any other interpretation, the existence of Section 28 would otherwise render Section 33 redundant.

However, the court rejected Corona’s contentions and held that the statutory defence of acquiescence under Section 33 of the act provides immunity only to proprietors of registered trademarks after a defined period of time. The court also clarified that a general plea/defence of acquiescence (which is independent from the statutory defence of acquiescence under Section 33 of the act) could be taken by the proprietor of a later unregistered mark. However, the court held that the general plea/defence of acquiescence was not available in the present case, as Corona had failed to prove use between 2001 and 2006, and any use after Emcure’s cease and desist notice was irrelevant and at Corona’s peril.

This decision is important as it clarifies the distinction between rights granted under Section 28 and those granted under Section 33 of the act. Further, it reaffirms the rules relating to the similarity of pharmaceutical marks, as enunciated by the Supreme Court in Cadila Healthcare Ltd v Cadila Pharmaceutical Ltd.

Adheesh Nargolkar, Smriti Yadav and Janhvi Chadha, Khaitan & Co, Mumbai