This article is written by Pooam Nahar who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from lawSikho.com.

Introduction 

The term “Intellectual Property” refers to “Protecting the work of human intelligence.” Any sign, or arrangement of signs, capable of separating the products or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark, according to Article 15.1 of the TRIPS Agreement. Those logos, in particular words, letters, numerals, figurative features, and colour variations, as well as any mixture of such signs, will be available for trademark registration. 

A distinctive and non-deceptive trademark for products or services is needed. Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours according to Section 2(1)(zb) of Trade Marks Act 1999.

In recent times, the trend of ‘Vocal for local’ has emerged in India. There is an establishment of various start-ups, businesses, etc. hence, the use of intellectual property especially trademarks has risen over a period of time due to young professionals working towards the goal of creativity. Establishing bona fide use of the label in an applicant’s registration form and a licensed proprietor’s infringement case will make a big difference.

In this article, we are going to learn about the meaning of the Bonafide use of trademark, the importance of usage, the non-use of trademark, various case laws and the conclusion.

Meaning of Bonafide use 

Bonafide is a Latin term which means usage in a good faith and not pretended. Depending on the type and circumstances of the situation, the substantiality of usage as judged by ordinary commercial criteria may be important in determining, if it was Bonafide. In India, trademark law places restrictions on licensed applicants and makes it mandatory to use the logo with a good faith purpose in both industrial and commercial matters. The legislation protects the consumer by excluding the possibility of an unfair advantage.

In Trademarks Act 1999, the applicant is required to prove the actual ‘usage’ of the mark before the registry in order to gain the registration. Therefore, actual usage of mark in India includes the physical presence of marks on goods as well as a proper advertisement of such goods and promotion of the mark. When submitting an application for trademark approval, it is important to note that the application not only demonstrates the mark’s use or previous use, but also the mark’s distinctiveness.

In Hardie trading Ltd. vs. Addison’s Paint and chemicals Ltd(AIR 2003 SC 3377)., the Supreme Court analyzed the aspect of use under the act and stated that “the use of a mark in relation to goods shall be construed as a reference to the use of the mark upon, whether in any physical or in any other relation whatsoever, to such goods,” and thereby held that “use of the mark must not be limited to the physical or in any other relation whatsoever, of such goods.”

Non-use of trademarks

Indian Trademark law includes another aspect of bona fide use which is an Intention to bona fide use. Section 47 of Trade Mark Act 1999, specifies the removal or cancellation of registered users on account of non-use of marks registered. As a result, the aggrieved party could file a lawsuit against the registered owner of the trademark, with the complainant bearing the presumption of proof in terms of trademark use.

If the registrar or appellate board is satisfied that the trademark was registered without any bona fide intention to use in connection with goods and services, and if the trademark has not been used for a period of five years and three months (5 years & 3 months) from the date of application, the trademark will be removed from the register and will no longer hold status.

Case laws

Pfizer Products Inc. V. Rajesh Chopra (2007 (35) PTC 59 Del)

Facts:

In this case, Plaintiff filed a suit in a Delhi high court against the defendant for injunction and damages for passing off and unfair competition as defendants have applied for registration of their trademark of a drug named ‘Geodon’ and ‘Zoloft’ in Delhi in the Trade Mark Registration which is in the jurisdiction of this court. In the above-mentioned case, there was a challenge on the proprietary rights of a drug named ‘Geodon’.

Issues Involved: 

  1. Whether mere filing of an application for registration of the trademark would grant territorial jurisdiction to the court to hear the matter and that whether an injunction can be granted if only there is a threat of the goods being sold in that particular jurisdiction and there is no actual sale of goods.
  2. The drug named ‘Geodon’ was registered by the plaintiff on 18th July 1996 in India. But, the defendant stated that they used the trademark of a drug named ‘Geodon’ since 1st June 2003. The defendant, therefore, contented that for the past years, the plaintiff didn’t use the trademark and hence this makes liable to be removed from the Register as per the provisions of Section 47 of the Trademark Act, 1999.

Court’s decision: 

The decision of the court was in the favor of the plaintiff as it uses its trademark globally and is renowned for selling drugs nearly in 40 countries. Hence, the court refused to remove the trademark from the registry. Therefore, the Defendants application was dismissed.

Somashekar P. Patil v. D.V.G. Patil(2018 SCC 637)

Facts:

In this case, Plaintiff filed a suit in a Karnataka high court against the defendant for infringement and passing off of the trademark and the trading name ‘Patil’ and ‘Patil parimala works’. The defendant was using an identical and deceptively similar trading name ‘PATIL FRAGRANCES’. The plaintiff’s trademark was ‘Ullas’ and the defendant’s brand were ‘Hitushree5’. 

Both the plaintiff as well as the defendant uses the surname ‘PATIL’. Initially, the temporary injunction was granted and upon an application to vacate the interim order, the trial judge vacated the interim order which was challenged before the High Court.

Issues Involved: 

Plaintiff argued that the respondent’s using of the name PATIL FRAGRANCES is an infringement of its registered trade name PATIL and PATIL PARIMALA WORKS. The complainant’s strongest point was that the defendant’s name is Doddanna Veeranagouda Patil and that the defendant worked as the Plaintiff’s General Manager prior to 2015. It was also said that the appellant and respondent are brothers and that the plaintiff and defendant’s families mostly use the surname ‘PATIL’.

Court’s decision: 

The High Court stated that under Article19(1) (g) of the Indian Constitution, every person has the fundamental right to engage in commerce, industry, and other activities, but that this fundamental right is subject to appropriate restrictions as well as various state and federal statutes.

A licenced applicant or a registered trademark proprietor cannot compete with a person’s bona fide use of his or her own name or that of his or her place of operation, according to Section 35 of the Trademark Act. The defendant has used the surname Patil as a bona fide user based on his family identity, which is popular in the region where the family comes from, according to the Court. It was decided that the fact that the appellant’s surname is ‘Patil’ is insufficient to enjoin the defendant from using the word ‘Patil’ in his trademark. The Court ruled that it is a person’s natural right to use a surname that has been in use for generations.

The Court admitted the defendant’s contention that he is a member of the Patil family and that the appellant is a relative, and that in the family circle, family members who work in different fields invariably use the surname ‘Patil’ in their respective enterprises. 

The court looked at the constitutional right provided by the Indian Constitution to go on business under fair limitations, and it was determined that Section 35 of the Trade Marks Act allows the defendant to use the word ‘Patil’ in a legitimate manner. The appeal was rejected, and the court affirmed the judgement vacating the injunction ruling against the defendant, based on the above reasoning.

Anil Rathi V. Shri Sharma steel tech (CS (COMM) 654/2019)

Facts:

In this case, both the plaintiff and defendant are engaged in manufacturing steel products. The Rathi Foundation is the registered proprietor of the impugned mark ‘RATHI’ and the plaintiff is one of its trustees. In this case, both the plaintiff and defendant are engaged in manufacturing steel products. 

A Memorandum of understanding (MoU) and Trust Deed regulate the usage of the impugned mark between the members of the large Rathi Family. The defendant belongs to the Rathi family and had granted licenses to third parties for the use of the ‘RATHI/RATHI TMT’ mark.

Issues involved:

The complainant filed a lawsuit alleging misuse of the impugned logo, asking the court to issue an ex-parte ad hoc order prohibiting the defendant from granting licenses and restraining the unlawful use of the mark. The appellant based his lawsuit on the Foundation’s contractual right to use the impugned mark solely as the licensed proprietor under Section 28 of the Trade Marks Act, as well as the defendant’s violation of the MoU and Trust Deed.

Court’s decision:

The defendant’s act of issuing licenses in his own capacity for the use of the infringed logo amounts to infringement, according to the ruling, since the issuance is in violation of the MoU and Trust Deed. The defendant argued that because his surname is ‘Rathi,’ he is entitled to use the contested symbol under Section 35. 

It was decided that Section 35 should not be used because it only applies to the personal use of trademarks and would not cover the granting of licenses or the use of trademarks by artificial bodies. The defendant’s use of the contested symbol was found to be not in good faith because he not only issued licenses for its use, but the companies to which the licenses were granted were in the same company as the Rathi family. The court stated that as a beneficiary, the defendant cannot claim ignorance of the terms of the MoU and Trust Deed.

The court reaffirmed the well-established theory that a label that has gained distinctiveness cannot be protected under Section 35, citing this as another reason why Section 35 should not be included. In addition, the court found the defendant’s contention that licensing the mark with a suffix was without validity and that it represented a violation of the infringed mark to be without merit. 

The court also stated that members of the Rathi family should only register the prefix or suffix that they use with the ‘RATHI’ logo for their firms’ goods individually; otherwise, registering them together will be considered an infringement.

Conclusion 

The meaning of “use” in relation to cancellation acts has been decided by courts over the years by various decisions. Thus, whether a patent is used on products (such as containers or the product itself) or in relation to facilities, it is deemed to be in use (say in promotional material relating to a service). “Use,” on the other hand, includes acts other than the selling of merchandise or the provision of services. 

It would be necessary, for example, if a group could show that it has taken “preparatory steps” to use the mark in India. For example, Indian courts have ruled that a mark’s pre-use advertising in India counts as “use” for the purposes of defending a cancellation suit.

The date on which the Certificate of Registration was issued is the date of entry into the Register. As a result, trademark registration is recommended in order to reap the rewards of exploitation.

References 

 

 


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