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Public Interest and Trademark Dispute

Trademark rights are commercial rights that can be used to sue others. While public interest is the right of the general public. It is up to the legislature and the courts to figure out how to strike a balance between them. The Trademark Act of 1999 makes no mention of it. The Trademarks Act of 1999 contains no specific provision addressing the interplay of public interest in trademark disputes. However, various Indian Courts, including the Hon'ble Supreme Court of India, have addressed the role of the public interest in various aspects of trademark disputes, such as granting or declining injunctions, the requirement of a person aggrieved to file a cancellation petition, a person interested or affected in an opposition proceeding, trans-border reputation, and trademark recordial.

Normally, in a trademark infringement suit, an injunction is granted in favour of the registered proprietor if the court determines that the violating party's trademark is the same or similar to the registered proprietor's trademark and the goods involved in the suit are the same. However, there is an exception to this general rule. It is not as if the right holder receives an injunction in every case of trademark infringement. Many factors must be considered by the court when deciding whether to grant or deny an injunction. One of the important criteria that may weigh against or in favour of a registered proprietor is public interest.

Depending on the facts of the case, the public interest may play a role in denying the registered proprietor's injunction. If the defendant manufactures or sells critical products to the general public, the Court may consider denying the interim injunction. Similarly, the public interest is important in trademark cancellation proceedings, trademark opposition proceedings, assignment recordial proceedings, and so on.

To begin understanding the role of public interest in litigation, let us look at an example from the Supreme Court of India. The Hon'ble Supreme Court of India had occasion to deal with the conflict of public interest and private rights in its judgments reported as (1995) 3 SCC 33, Mahadeo Savlaram Shelke and Ors Vs Puna Municipal Corporation and Ors. It was a case in which the Poona Municipality initiated a proceeding to acquire a building, which was approved by the relevant tribunal. Being dissatisfied with the same, the person aggrieved sought an injunction from the court, which was initially granted but later overturned by the Hon'ble High Court while exercising Appellate Jurisdiction.

In such a case, a Special Leave Petition was filed with the Supreme Court of India. In the aforementioned case, the Hon'ble Supreme Court of India quoted a few relevant paras from Buckley's "Modern Law Review", Vol 44, 1981 Edition, at page 214, R.A., where Buckley stated that "a plaintiff may still be deprived of an injunction in such a case on general equitable principles under which factors such as the public interest may, in an appropriate case, be relevant."

The said judgement also made reference to "The Law Quarterly Review" Vol 109, at page 432 (at p. 446), by A.A.S. Zuckerman, under the title "Mareva Injunctions and Security for Judgment in a Framework of Interlocutory Remedies," wherein four major criterion are laid out, which are to be considered when granting or declining an interim injunction. First, whether the plaintiff would suffer irreparable harm if the injunction were denied; second, whether this harm outweighs any irreparable harm that the defendant would suffer if the injunction were granted; third, the parties' relative chances of success on the merits; and fourth, any public interest involved in the decision. As a result, the public interest was given top priority consideration when the injunction was granted or declined. The appeal was ultimately denied because the public interest in widening the road was at stake.

Back in 1969, the Hon'ble High Court of Calcutta had to deal with the issue of a person who was interested in an opposition proceeding. The decision was referred to as AIR 1969 Cal 80. Registrar Of Trade Marks et al. vs. Prem N. Mayor et al. The person objecting to the registration's locus was called into question on the grounds that the objector was not the registered owner of the trade mark and thus had no right to object. However, the Hon'ble Calcutta High Court rejected this argument, citing Section 21 of the Trade and Merchandise Marks Act 1958 (New Trademarks Act 1999), which deals with opposition to registration, as saying that "any person may object to an application for registration." As a result, a prior registered trade-mark owner is not required. A customer, a purchaser, or a member of the public who is likely to use the products may object to the registration of a trade mark in respect of such goods on the grounds of possible deception or confusion, according to the Hon'ble Calcutta High Court. The experts agreed that deception or misunderstanding is an issue of public interest and a major problem of trade mark law.

This principle was subsequently followed by the Hon’ble High Court of Delhi in its judgement reported as 71 (1998) DLT 818, Kedar Nath Gupta Vs. J.K. Organisation. In this judgement, the Hon’ble High Court of Delhi, while referring to Division Bench in Synthes Ag Chur Vs. Rob Mathys India Pvt. Ltd., 1997 (17) PTC (DEL) (DB) 669, observed that any attempt by any trade or industry to bask in the warmth of and make illicit profit and reputation not earned legitimately by their own effort but built by others, has to be disapproved in order to protect not only the public interest of Indian consumers, the private rights of the traders, but also commercial morality. This approach, however, must be limited to the same or similar products, or to the most closely related products.

This approach can be extended to totally different kinds of products. In this latter area, in order to protect the economic interests of manufacturers of different kinds of goods and the public interest, English rigidity appears to be essential. Thus, the Hon'ble Court was of the view that the court should safeguard the private interest as well as the public interest. though with a precaution that this has to be applied in relation to the same or similar kind of product.

The Hon’ble Supreme Court of India, while dealing with the scope of public interest in relation to a cancellation petition, has held that not only the commercial interests of parties, but also the public interest are required to be taken into consideration in such a proceeding. The same was reported as AIR 1996 SC 3295: Cycle Corporation of India Ltd. Vs. T.I. Raleigh Industries Pvt. Ltd., wherein the Supreme Court’s observation was as under:" It is true that while exercising discretion, the Court under section 46 of the Act should take into consideration not only commercial interest of the parties but also public interest.

The Hon’ble Supreme Court of India further observed in (2001) 5 SCC 73, Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd, that the public interest would support a lesser degree of proof showing confusing similarity in the case of a trade mark in respect of medicinal products. In this case, the Hon’ble Supreme Court of India treated medicinal products in a different manner as the consequences of confusion and deception with respect to medicinal products in the public are far reaching. The Hon’ble Supreme Court of India observed as under: “Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:

The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints.

The requirement of public interest was further highlighted by Hon’ble Supreme Court of India in matter pertaining to trademark dispute in relation to pharmaceuticals preparation. The Hon’ble Supreme Court of India in its Judgement reported as “2004 (12) SCC 624 Milmet Oftho Industries & Ors. Vs  Allergan Inc , where in the Hon’ble Supreme Court observed:

 “The court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the applicant in India and the user by the overseas company. The court must ensure that public interest is in no way imperilled.

The Hon’ble Division Bench of the Madras High Court declined to grant any relief to one of the joint owners of the trademark by observing that it was not in the public interest. 2004 (28) PTC590 (Mad) Mrs. J. Zeenath Bivi vs M. Khader Ibrahim. In this case, both the contesting parties were joint proprietors of the registered trademarks, and both the parties sought an interim injunction in their pending suits restraining the other party from infringing trademark ROJA or RAJA, from infringing copyright in respect of betel nut/supari or any kind of its allied products in the course of business using the trademark ROJA or ROSE, or using the trading style with the initial N.V.K.M. This dispute was between the family members of a family. The court declined to grant any relief to the appellant, Zeenath Bivi. The Hon'ble Single made the following observations:

“The appellant Zeenath Bivi has not only misappropriated the trademarks for her own independent use, but also misappropriated the trading style adopting the name, N.V.K.M.Traders, thereby rendering the deception practised upon the public complete and absolute. Learned Single Judge held that the appellant Zeenath Bivi has no background in the manufacture of betel nuts according to know-how and standards of the joint proprietors who have been actively associated with the manufacture of the goods for decades as she is a housewife without any formal education”.

This is the order that was challenged by the appellant, namely Zeenath Bivi. The Hon’ble Division Bench refused to interfere with the order assailed. Thus, the Hon’ble Single Judge, who observed the finding regarding public interest, was approved by the Hon’ble Double Bench by refusing to interfere with the order assailed.

While dealing with the issue of change in the name of the registered proprietor pertaining to trademark OCLEG, the Hon’ble High Court of Gujarat at Ahmedabad reiterated the issue of public interest. This judgement was reported as 2017 (72) PTC 331 (Guj) Kantaben Manibhai Patel Vs. Premchandbhai Venidas Patel and Ors. The High Court, while dealing with the interpretation of the term "person aggrieved" under Sections 46 and 56 of the Trademark Act, observed:

 “In our opinion the phrase "person aggrieved" for the purposes of removal on the ground of non-use under section 46 has a different connotation from the phrase used in section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register.

32. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined "person aggrieved" in the matter of Powell's Trade Mark, In re, Powell v. Birmingham Vinegar Brewery Co.: (AC p. 10)

'... although they were no doubt inserted to prevent officious interference by those who had no interest at all in the Register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation.

Recently, on March 30,2022, a judgement has come from the Hon’ble High Court of Delhi wherein, on the ground of inter alia, public interest, the Plaintiff was declined an injunction. This is a Judgment dated 30.03.2022 and passed by the Hon’ble High Court of Delhi in a Suit bearing CS (Comm) 192 of 2022 titled as Mankind Pharma Limited Vs Tata Medical and Diagnostic Limited. It was a case where the plaintiff claimed itself to be the registered proprietor of the trademark OMIPURE in class 05 in relation to pharmaceuticals and medicinal preparations. A suit for infringement was brought against the defendant for the use of the trademark OMISURE in relation to the RT-PCR test kit.

The court declined to grant injunction to the plaintiff  by observing that  Defendant’s product were RT-PCR kit which are used in laboratories for the purpose of detecting whether the omicron variant is present in the swab sample or not. The court further observed that the test kit of the Defendant sold under the mark ‘OMISURE’ is of a specialised nature used in laboratories for diagnosing the Omnicron variant of Covid-19.

Public interest was involved in the subject matter suit as the product of the defendant were meant for fighting against COVID 19 pandemic, especially the OMICRON variant , which have created havoc in India. Considering this aspect the Court did not grant interim injunction in favour of the Plaintiff.

As a result, we can observe that, while there is no specific provision addressing the interaction of public interest in trademark disputes, there have been case laws that shed light on the subject. In the case of pharmaceutical items, the Hon'ble Supreme Court of India has specifically said that the public interest must be taken into account. Nonetheless, it is believed that the legislature must fill in the gaps. When dealing with provisions that do not amount to infringement, the term "public interest" must be defined in the Trade Marks Act 1999, and public interest criteria must be inserted with proper illustration and explanation, making it much easier for the court, as well as businesses, consumers, and others, to understand.

Ajay Amitabh Suman, IPR Advocate, High Court of Delhi.

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