Yet another classic case here tells us why it is imperative to do a thorough search to look for any trademark infringement before finalizing name for your new venture. Getting your company registered with Registrar of Companies/Ministry of Corporate Affairs may not give you all the rights you should get over your company’s name, mainly because MCA has not been exercising its powers diligently by raising objections when someone tries to register a company consisting of a registered trademark of a third party. We also wonder should there be a reverse process ?
Time and again we emphasize the real need for exploiting a trademark in trade and commerce to the fullest potential possible to strengthen your mark, which is yet another time backed up by the verdict in Dr. Reddy’s Laboratories Vs. Reddy Pharmaceuticals Limited.
Dr. Reddy Vs. Reddy Case
In ORA/78/2006/TM/DEL DR.REDDY’S LABORATORIES LTD. Vs M/S. REDDY PHARMACEUTICALS LIMTED & ANOTHER, The Intellectual Property Appellate Board (IPAB) has set aside the trademark “Reddy” adopted by Reddy Pharmaceuticals Limited (Reddy Delhi). Dr. Reddy’s Laboratories argued that it was established in 1984 and then went on to become one of the largest pharmaceuticals companies in India and has been widely known for its accomplishments in the Pharma domain. In addition, it also stated that it partnered with various international institutes for pharma research and that their mark has had acquired goodwill and reputation.
The disputed Trademark Application No. is 1192732, registered in Class 5 meant for pharmaceutical goods. The application was lodged by Reddy Delhi in 20o3 and a registration certificate was issued in 2005. Thanks to our system, the case was decided against Reddy Delhi after they recently filed a renewal application to renew their trademark for another 10 years. This gave them the opportunity of using the disputed mark for half a decade.
In this case, the IPAB observed,
“the first offence is within the domain of Registrar of Companies. But the second situation is clearly attracted in the instant case. The applicant were the first to apply for registration in 2001. The respondent applied for a similar mark subsequently in 2003. The registry erred in accepting the respondent’s subsequent application. Therefore, the respondent’s trade mark ex-facie is wrongly registered and wrongly remaining on the register. The applicant company headed by a scientist/technocrat have indulged in benign neglect of not seeking timely protection for their brand name and are now ruing its decision. The respondent are seeking to justify adoption and use of ‘Reddy’ by virtue of the owners name coincidently carrying the same surname. It is true law recognizes and preserves the right which every man has to use his own name including for carrying on trade or business provided such use is not fraudulent. In the instant case, everything points to the fact that the respondent has deliberately adopted the impugned mark to deceive the public and is in every way a willful misrepresentation to the customer. Thus, there is not even a prima-facie arguable case to support the contentions of the respondent that his adoption and use is honest. Both Section 12 and 35 are subject to the test of bona fide claim of proprietorship of the mark under Section 18(1). If he fails to prove ownership under Section 18(1), his mark cannot remain on the register. Hence, it should go.
What is the present status?
Therefore, the IPAB has ordered for the removal of trademark “Reddy” but, to everyone’s surprise, not ours, it may appear that the online e-register status is still showing it to be “Registered“. However, it is going to take a few months for the Trademark Registry to make the changes; and again thanks to the system.