This case analysis is done by Monal Verma (5th-year BA. LL.B. student from Pt. Ravishankar Shukla University, Raipur, Chhattisgarh and Editor at legalonus)
APPELLANT
American Home Products Corporation
RESPONDENT
Mac. Laboratories (P Ltd.
REFERENCE
1986 AIR 137, 1985 SCR Supl. (3) 264
SUBJECT MATTER
Registration of Trademark under Section 18 of the Trade and Merchandise Marks Act, 1958.
FACTS OF THE CASE
American Home Products Corporation is a multinational company that manufactures and markets pharmaceutical products and drugs.
In the year 1956, American Home Products Corporation introduced a drug under the trademark “DRISTAN” for symptomatic relief from cold & congestion.
The MNC obtained the trademark for “DRISTAN” in 39 countries.
In 1958, a technical collaboration agreement was signed between American Home Products Corporation and Geoffrey Manners & Co. Ltd. (hereinafter referred to as “Indian Company”).
As per the said agreement, American Home Products Corporation agreed upon providing the manufacturing details, including the formulae, technology and any necessary assistance to bring out “DRISTAN” in the Indian market.
After registration of the trademark in India, the MNC vested the Indian company a license and imported machinery for the manufacturing of tablets and provided the samples of the tablets to the company.
During this period, while the production of DRISTAN is yet to commence in India, an application was filed before the registrar for the registration of the mark “TRISTINE” in class 5 to be used in respect for respiratory ailments, by the Respondent, in this case, Mac Laboratories Private Limited.
VIEWS OF THE REGISTRAR
American Home Products Corporation filed a notice against Mac Laboratories private ltd. stating that “TRISTINE” is underhandedly similar to “DRISTAN.”
The notice of complaint was rejected by the registrar and the trademark of TRISTINE was granted to Mac Laboratories private ltd.
VIEWS OF THE BOMBAY HIGH COURT
American Home Products Corporation then appealed to the Bombay High Court against the order of the registrar.
The single-judge bench of Bombay High Court revoked the registration of Trademark TRISTINE by ordering in favour of the appellant.
In response to the order, the respondent company filed for redressal and removal of the mark DRISTAN from the register, stating that the appellant had no bonafide intentions of using the trademark and hence should be removed from the register.
While the process was pending, the appellant company and the Indian Company entered into a registered user agreement and filed an application for the Indian company to be the registered user of the trademark of the appellant company.
MATTER IN QUESTION
The question that appeared to the Hight court was;
Whether the trademark owner who intends to use the trademark solely via the registered user of the mark in India, is entitled for registration of the said trademark under Section 18 of the Trade and Merchandise Marks Act, 1958?
- VIEWS OF SUPREME COURT
- As the matter is of immense importance to the international proprietors of trade marks, to registered users of trade marks in India and to the Industry and Commerce at large, the matter was referred to the Supreme Court.
- The Supreme Court dismissed the request for redressal by the respondent and ruled in the favour of the appellant granting that it is entitled to register the mark DRISTAN, stating that although the production of DRISTAN has not commenced in India, yet the company has made sufficient arrangements for such production, which establishes the bonafide interest of the company.
- PRINCIPLES OF LAW LAID DOWN
- Registration of a Trademark is allowed even in the case when the proprietor does not intend to use the trade mark himself but via a registered user.
- Marketing of the goods under the trademark is not necessary to show a bonafide intention for usage of such trademark.
