2007 (2) TMI 690 - HC - Indian Laws

Summary

Issues Involved:
1. Validity of the interim injunction vacated by the learned Single Judge.
2. Alleged deceptive similarity between the trademarks 'Meromer' and 'Meronem'.
3. Applicability of Section 124 of the Trade Marks Act, 1999 in staying the suit.
4. Rights of the registered proprietor under Sections 29 and 32(e) of the Trade Marks Act.
5. Prima facie satisfaction of the court regarding the invalidity of the registration of the mark.

Detailed Analysis:

1. Validity of the Interim Injunction Vacated by the Learned Single Judge:
The appellants/plaintiffs challenged the order dated 16th May 2006, which vacated the interim injunction granted on 6th October 2005. The interim injunction had restrained the respondent/defendant from using the trade name 'Meromer'. The learned Single Judge vacated the injunction based on the application filed by the respondent/defendant under Order XXXIX Rule 4 CPC and dismissed the application filed by the appellants/plaintiffs under Order XXXIX Rules 1 and 2 CPC.

2. Alleged Deceptive Similarity Between the Trademarks 'Meromer' and 'Meronem':
The appellants/plaintiffs argued that the trade name 'Meromer' is deceptively similar to 'Meronem'. The learned Single Judge, after considering the facts and circumstances, held that the two trademarks are phonetically not similar and are distinct. The comparison included aspects like composition, color combination, label background, label contents placement, shape of vials, and the trademarks themselves. The court found that the prefix 'Mero' is common to both marks and is derived from the drug 'Meropenem'. The suffixes 'nem' and 'mer' in 'Meronem' and 'Meromer' respectively, were found to be sufficiently distinct to avoid confusion. The decision emphasized that nobody can claim exclusive rights over a generic term like 'Mero', which is publici juris.

3. Applicability of Section 124 of the Trade Marks Act, 1999 in Staying the Suit:
The appellants/plaintiffs contended that the suit should have been stayed under Section 124 of the Trade Marks Act, 1999, as they had filed a rectification application for the removal of the trade mark 'Meromer'. The court clarified that Section 124(i)(b)(ii) applies only to applications for rectification that are already pending. Since the rectification application was filed after the institution of the suit, the court found no grounds to stay the proceedings. The learned Single Judge was justified in not staying the suit as the mere filing of a rectification application does not automatically stay the registration or affect the rights of the registered owner.

4. Rights of the Registered Proprietor Under Sections 29 and 32(e) of the Trade Marks Act:
The respondent/defendant argued that the appellants/plaintiffs' action for infringement is not maintainable under Sections 29 and 32(e) of the Trade Marks Act, which state that the use of a mark by its registered proprietor does not constitute infringement. The court upheld this view, noting that the respondent/defendant's trade mark 'Meromer' was registered effective from the date of application (2nd August 2004), and thus, the use of 'Meromer' by the respondent/defendant was lawful.

5. Prima Facie Satisfaction of the Court Regarding the Invalidity of the Registration of the Mark:
The court emphasized that for an application for rectification to be considered, the appellants/plaintiffs must show prima facie satisfaction of the court regarding the invalidity of the registration of the mark. In this case, the rectification application was still pending, and the court found no prima facie grounds to invalidate the registration of 'Meromer'. The learned Single Judge's decision to not stay the suit and to direct the respondent/defendant to maintain accounts of sales was upheld.

Conclusion:
The appeal was dismissed, and the findings of the learned Single Judge were upheld. The court found no deceptive similarity between 'Meromer' and 'Meronem', and the interim injunction was rightly vacated. The appellants/plaintiffs' arguments regarding the stay of the suit under Section 124 and the alleged infringement under Sections 29 and 32(e) were not accepted. The decision emphasized the importance of prima facie satisfaction in rectification applications and the publici juris nature of generic terms in trademark disputes.