The competing marks “STIMULIV” and “STIMULET” are different when compared as a whole. No claim of trademark infringement against Corona may be raised as long as its registration is active and effective : Bombay High Court
The Bombay High Court in its judgment on the 20th of January, 2023 stated that Franco Indian Pharmaceuticals Private Limited had not established a claim of trademark infringement or passing off against Corona Remedies Private Limited . The Court established that it had not called for such a severe interim order. Therefore, the contested order and decision from March 1, 2021 were reversed. The court made it plain that the aforementioned observations were merely offered as a preliminary basis for reviewing the appeal. The case was presided over by Honourable Justice KR Shriram.
The case of Corona Remedies Private Limited V/s Franco Indian Pharmaceuticals Private Limited were as follows. The Appellant “ Corona “ who was the defendant in the suit was prohibited from using the name “STIMULET” in connection with medicines. The Respondent, “Franco” had filed a suit against Corona for the infringement of their trademark “ STIMULIV” thus seeking an injunction from a single bench court for which the appeal had been taken up by the High Court.
FACTS OF THE CASE :
Franco’s mark “STIMULIV” was an Ayurvedic remedy supplied in syrup and tablet form for liver function and Corona’s “STIMULET” was an allopathic formula used in the treatment of breast cancer and infertility.
Franco’s contention was that they were ardent users of their trademark “ STIMULIV “ ever since the year 1975 and hence obtained a conjunction against Corona for their use of “ STIMULET”
Franco’s position is that it has invested a significant amount of time and money in developing its mark and has begun exporting its goods with the mark “STIMULIV” to a number of nations, including Bhutan and Mauritius.
Franco asserts that on November 19, 2020, it also submitted a notice of protest to the trade mark registry in order to prevent the word mark “STIMULET” from being registered. Franco claimed that Corona was violating its “STIMULET” trademark as a result. As a result, it requested and was granted an order of injunction against trademark infringement as well as a comparable injunction against passing off, all of which are challenged in the appeal.
The name “STIMU” is an acronym taken from the dictionary word “STIMULATE,” which means “to make anything active,” and the word “LET,” which stands for “stimulate,” according to Corona. Together, these two words from the mark STIMU-LET. The word “LET” is obtained from the chemical name “LETROZOL,” which is the substance used in the Corona product, according to Mr. Kamod, who claimed that it is a common expression that is also used by many third parties with regard to their items.
The Court held that Corona was justified in impugning the injunction passed against them and that it is very evident from Section 28(3) of The Trademarks Act, 1999 and the law is also well established that once a trade mark is registered, the registered proprietor is not subject to an infringement claim. It stated that Franco appeared in court and claimed the marks were the same or comparable. In its defense, Corona made the valid argument that if the circumstances were comparable or identical, Corona was not subject to an infringement claim under Section 28(3) of the Act.
The Court acknowledged that Corona is the registered owner of the trade mark STIMU-LET, and Franco had not brought any legal action to correct the registration’s errors as of yet.
Corona’s trademark registration is so legitimate and active. Even a cursory reading of section 28(3) makes it plainly evident that Franco cannot invoke the exclusive rights granted to it based on its trade mark registrations to prevent Corona from using its registered trademark.
Thus no claim of trademark infringement against Corona may be raised as long as its registration is active and effective.
The appeal was dismissed with costs of Rs. 5,00,000/- which must be paid within 4 weeks by check made out to the advocates of Corona.
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JUDGEMENT REVIEWED BY SREYA MARY.