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High Court restrains company from using trademark of another company

Bombay High Court

The Bombay High Court has restrained Innova Cap Tab and its sister companies from manufacturing and marketing any medicinal preparation 

Bombay-High-Court-Mumbai-1Bombay High CourtMumbai: The Bombay High Court has restrained Innova Cap Tab and its sister companies from manufacturing and marketing any medicinal preparation or product by using the mark ‘MONTINAL’, which is a registered trademark of Aristo Pharmaceuticals Pvt Ltd.

The order was passed by Justice S J Kathawala recently on a notice of motion taken out by Aristo Pharmaceuticals Pvt Ltd in a suit filed by it against Innova Cap Tab and others for infringing its trademark.

The Plaintiff has made out a prima facie case in their favour. The balance of convenience is also in their favour. In view thereof, pending the hearing and final disposal of the Suit, the defendents are restrained from infringing the trademark of Aristo Pharmaceuticals Pvt Ltd, said the Judge while disposing of the notice of motion.

The Plaintiff is engaged in manufacturing and sale of medicinal and pharmaceutical preparations. In December, 2002, the Plaintiff (then a Public Limited Company being Aristo Pharmaceuticals Limited) originally conceived and adopted a trademark being ‘MONTINA’, to be used for its products.

On December 31, 2002, the Plaintiff applied for and got the trademark MONTINA registered for medicinal and pharmaceutical preparations. Subsequently, the plaintiff became a private Ltd company.

The registration of the trademark was renewed on December 31, 2012, for a further period of ten years in favour of the Plaintiff. The registration of the trademark is thus valid and subsisting, the court noted.

In June last year, the Plaintiff commenced manufacturing of medical preparation in the form of syrup and tablets which was to be marketed under the trademark MONTINA. In August last, the Plaintiff commenced selling its products under the trademark MONTINA-L. Since then the Plaintiff is selling the said medicinal preparation in tablet as well as syrup form.

In September last year, the Plaintiff came across the Defendants’ medicinal preparation sold under the identical trademark MONTINAL. On September 19, 2013, the Plaintiff filed a suit against the Defendants for infringement of its trademark and passing off the Defendants’ goods as those of the Plaintiff’s by the Defendants’ use of trademark ‘MONTINA’.

The other side argued that the trademark ‘MONTINA’ was invented by Defendant No 2 in the year 2008. The prefix ‘MONT’ is taken from the principal drug ‘Montelukast’ and ‘INA’ is taken from the name of the Company ANIKEM.

At the time of the adoption of the trademark, the Plaintiff’s products were not available in the market and therefore the adoption is honest. Moreover, Defendant No 2 claimed that it had spent money on the sales/promotional activities.

Since 2009, Defendant No 2 is openly, regularly and extensively using the trademark ‘MONTINAL’ in regard to their medicinal and pharmaceutical preparations as can be seen from sales figures provided by the company, the court was told.

Defendant No 2 has been selling the medicinal preparation in the market since 2009 and the suit was filed by the Plaintiff in the year 2013. Therefore there was a delay on the part of the Plaintiff in filing the Suit, it was argued.

The Court, however, noted that the Plaintiff had correctly pointed out that the Defendant No 2 in its affidavit has merely stated as to how it coined the mark MONTINA but has not raised a specific plea to prove that the mark is generic, and hence the Plaintiff does not have a monopoly despite the registration.

In the absence of such a plea, an argument of this nature cannot be raised across the bar, the Judge said.

The explanation as to how the Defendants derived the very name which is absolutely identical to that of the Plaintiff is not bona fide and does not inspire any onfidence, the Judge said.

In any event, once a mark is registered, it is not open to any person so long as the mark remains on the Register, to contend that the same has been derived from its generic drug and therefore invalid, Justice Kathawala added.


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