AI Structured Summary
Not yet generated for this judgment
Judgment
V. Ravi, Technical Member
1 . This is a case where a trade mark has been registered by a former business associate of the proprietor of a trade mark without authority. Section
146 of the Trade Marks Act, 1999 (in short 'Act') permits the proprietor to oppose or seek cancellation or rectification of the mark from the register in
such contingency. The time within which such action has to be taken is three years from the date he is aware of the conduct of the agent. The fact
giving rise to this rectification petition is detailed below. The applicant Z-Medica Corporation a US based company founded in 2002 is a global leader
in manufacturing products that stop traumatic bleeding. Their predecessor M/s. On Site Gas Systems secured a patent in 1989 for invention of a novel
method of treating wounds using zeolite, a naturally occurring mineral. The applicant product are life saving hemostatic agent manufactured and
marketed under the trade mark 'QUIKCLOT'. From April, 2002 the applicant adopted stylized representation for its trade mark 'QUIKCLOT', i.e., In
India many applications have been made since 2006 for its registration in conjunction with sub-mark by the applicant. The impugned mark is registered
in U.S.A., U.K. and many other jurisdiction.
In India, the distribution of applicant product bearing trade mark 'QUIKCLOT' was made through one Shaneel Kumar Jain who later promoted and
incorporated Sagar Fossil Fuel Technologies (P) Ltd. in 2003. During the currency of distribution agreement S.K. Jain submitted samples supplied by
the applicant to the Director General Armed Forces Medical Services(DGAFMS) for test approval which was received in September, 2003. In
September, 2005 the applicant confirmed S.K. Jain as its sole representative in India. The applicant ended the exclusive arrangement with S.K. Jain in
January, 2006. His firm Sagar Fossil Fuel Technologies (P) Ltd. entered into an agreement with one Am Trans Health LLC, USA to import, inter alia,
hemostatic products from the US to India in June 2006. The applicant supplied products under the trade mark 'QUIKCLOT' to Am Trans Health LLC
in 2006 and 2007 which were shipped to S.K. Jain for sale within India in good faith on a non exclusive basis. Am Trans Health LLC and Sagar Fossil
Fuel Technologies (P) Ltd. filed a civil action against the applicant at Rhode Island Superior Court, Providence, USA which was later transferred to
US District Court, Rhode Island. The applicant later filed a motion to dismiss the complaint which was allowed. In May 2008, the applicant initiated a
law suit against Am Trans Health LLC and Sagar Fossil Fuel Technologies (P) Ltd., before US District Court, Connecticut for trade mark
infringement, breach of contract, tortuous interference with prospective business expectations, fraud, misrepresentation, unfair trade practices, unfair
competition, conversion and conspiracy seeking to restrain them using 'QUIKCLOT' which action is pending.
3 . Recently, the applicant learnt Sagar Fossil Technologies (P) Ltd. initiated an infringement Suit in Delhi High Court [CS (O.S.) No. 1135/2010]
against the present distributor M/s. Consolidated Products Corporation in respect of which the applicant is not a party. The applicant is aggrieved by
the registration of the trade mark 'QUIKCLOT' under No. 1326454 in Class 5 in respect of 'medicinal preparation' registered in the name of one
Mukesh Gupta. The registered proprietor is related to Shri Shaneel K. Jain and was Director of Sagar Fossil Fuel Technologies (P) Ltd. upto April,
2006. The registration of the impugned mark has been obtained fraudulently and contrary to all principles of business ethics and honest trade practices
and void ab initio. The evidence in support of the application is an affidavit of one Francis J. O'Brien, Chief Financial Officer of the appellant
company.
4 . A copy of the rectification petition was sent to the respondent Mukesh Gupta on 23rd August 2010 and returned unserved with remarks 'LEFT' by
postal authorities on 14th September, 2010. The applicant moved a Miscellaneous Petition seeking permission of Board to serve the respondent by
way of publication. The Notice/Summons was published in ""The Statesman"" (English) and ""Veer Arjun"" (Hindi) on January 30th 2012. The matter
was listed for hearing on 26th March, 2012. As the respondent did not appear, the matter was set ex parte. We have heard the Counsel for the
applicant and gone through the records.
5 . The grounds on which removal of the impugned registered trade mark are based on Section 9(1), 11, 18(1), 47(1)(a) and 57 of the Act. We have
heard the Counsel for the applicant and gone through the record.
6 . We now examine the plea for removal of the impugned trade mark from the register under Section 57(1) read with Section 18(1) of the Act.
Commercial honesty is the template on which all trade marks survive. There was a fiduciary relation between the applicant and the registered
proprietor up to 2006. Given this antecedent adoption and use of the impugned mark by Mukesh Gupta is tainted and is an unconscionable behaviour
and the applicant are justified in litigating the matter in pursuit of justice. The principle of commercial honesty is deeply embedded in the very existence
of a trade mark. Examined from any angle the impugned registration has been secured fraudulently to trade on the reputation of the applicant's mark
and is barred by statute. It is an offence under the law to steal and adopt someone else's trade mark. It is visited with both civil and penal
consequences under the statute. It amounts to criminal misconduct as it disguises the ownership of the mark and when registration of the mark is
secured it creates perception of legitimacy. Up to the stage of registration it is a passive surreptitious acquisition but after registration it invites criminal
liability. Unauthorised use and registration of someone else's trade mark hijacks another's reputation. We therefore hold the impugned mark is wrongly
remaining on the register and without sufficient cause.
7 . We have confined our finding in details only on the issue of dishonest adoption and give our ruling under Section 18(1) of the Act. Regarding
objection under Section 9 on absolute ground we have serious reservation whether the impugned trade marks qualifies for registration and can serve
as a source of origin of the goods having the capability to distinguish the good of one entity from others. In other words, it cannot be expected to
perform its essential function as a trade mark which is to distinguish goods. The word 'QUIKCLOT' used for life saving drugs is inherently
descriptive. It is a non-distinctive word and merely describes of the main characteristic or quality of goods or services. It is not a trade mark at all. It
does not serve to identify the source of goods. No trade mark rights can be granted to merely descriptive word. The policy behind prohibiting
descriptive mark is to protect the public from deception or misleading use in the market place. The law is that the owner of a trade mark should not
unjustly enrich himself and advance his business interest by free riding on the characteristic or quality of the goods. Words like ""QUIKCLOT"" or its
minor variation should be open for use by all in trade. Public interest are also affected by allowing monopoly of such word and create barriers to
competition by improperly using the trade mark law to remove the impugned mark from general use. Our order shall not be construed as an approval
or acceptance of the appellant's application for the mark ""QUIKCLOT"". As and when such applications come up for registration it shall be decided in
accordance with law. In the result, ORA/187/2010/TM/DEL is allowed and registered trade mark 'QUIKCLOT' bearing No 1326454 in Class 5 is
hereby removed from the register of trade marks. There is no order as to costs.