Financiere Batteur Sas vs Kalai Arasu

(T)OP(TM) No.481 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

Reserved on : 05.12.2024

Pronounced on : 11.12.2024

CORAM:

THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE

(T) OP (TM) No.481 of 2023

Financiere Batteur Sas, Avenue du General de Gaulle, France. .. Petitioner

vs.

1.Kalai Arasu, trading as Spot Light, Bangalore – 560 047.

2.The Registrar of Trade Marks, Trade Marks Registry, Guindy, Chennai. \ .. Respondents

Prayer: This petition is filed under Sections 47 and 57 of the Trade Marks Act, 1999, seeking to expunge, remove and/or cancel the entry relating to the impugned registered trademark No.2897583 in Class 05 for the trademark “Physiolac AR” in the name of the first respondent.

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For Petitioner : Mr.Arun C.Mohan for Mr.Sharad Vedehra

For R1 : Mr.B.Karthik For R2 : Mr.C.Samivel, SPCGSC

ORDER

This petition has been filed under Sections 47 and 57 of Trade Marks Act,

1999 (in short “the Act”) seeking for cancellation of the trademark “Physiolac

AR” bearing application No.2897583 registered in favour of the first respondent

under Class 05 on a "proposed to be used” basis.

2. The petitioner claims that they are a globally recognized company

engaged in the manufacture and marketing of a wide range of products in the

health and beauty care sectors, particularly, focused on baby and childcare

products.

3. According to the petitioner, their predecessor in title conceived the

trademark “PHYSIOLAC” in the year 1992 and the mark was first introduced

commercially in France in 1996. According to them, the mark was specifically

designed for dietary formulations and related baby and childcare products.

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4. According to the petitioner, since 2007, they have been actively using

various iterations of the mark “PHYSIOLAC” in international markets and these

include PHYSIOLAC AR, PHYSIOLAC RELAIS/RELAY, PHYSIOLAC

GRAND APETIT, PHYSIOLAC CROISSANCE/GROW, PHYSIOLAC BIO,

among others. The petitioner claims that they have obtained trademark

registration for their trademark in various countries abroad. According to them,

their trademark “PHYSIOLAC” has acquired status of a well-known mark as

contemplated under Article 6(bis) of the Paris Convention, to which, India is a

signatory, and as per Section 2(1)(zg) of the Act. According to the petitioner,

their trademark “PHYSIOLAC” has garnered substantial trans-border reputation,

and the consumers in India are familiar with the PHYSIOLAC products and their

variants.

5. The petitioner has obtained registration for the word mark

“PHYSIOLAC” in India in Application No.3401439 under Class 05 for dietetic

substances for medical use, food for babies, and food for babies made of milk and

cereals; in Class 29 for milk and milk products; and under Class 30 for cereals and

preparations made from cereals. The trademark registration in favour of the

petitioner is valid upto 02.11.2026.

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6. According to the petitioner, immediately after coming to know about the

malafide application filed by the first respondent for the impugned mark, along

with several others, under the provisions of Section 18(1) of the Act, on a

“proposed to be used” basis in the year 2015, the petitioner issued letters dated

01.09.2016 and 12.09.2016 to the first respondent requesting them to withdraw

their trademark application for Physiolac mark and its variants in Classes 5 and

30, which pertain to goods related to baby foods and dietary formulation.

7. According to the petitioner, they had filed their oppositions to 15 other

malafide applications of the first respondent, some of which have been deemed

abandoned, but, wrongfully, the second respondent has granted registration for a

device mark under application No.2897583 in Class 5 and the said applications

have been filed by the first respondent on 03.02.2015 on a “proposed to be used”

basis. The petitioner issued a cease and desist notice dated 09.12.2016 through

their counsel to the first respondent calling upon them to withdraw their pending

trademark applications relating to “Physiolac” listed under application

Nos.2897576 to 2897592.

8. According to the petitioner, they conducted an in-house investigation on

06.06.2017, which confirmed that the first respondent had never used the https://www.mhc.tn.gov.in/judis

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trademark “PHYSIOLAC”. According to the petitioner, on investigation, it was

revealed that the first respondent's primary business activities were related to

event management services under the name “SPOT LIGHT”, but, they have no

involvement in the baby foods and nutritional supplements sectors.

9. According to the petitioner, the malafide intent of the first respondent

became unequivocally clear if one observes that the impugned mark has not been

put to any actual, genuine or meaningful use for a single day since its registration.

According to the petitioner, the prolonged period of non-use is in direct

contravention of Section 47(1)(a) of the Act, which mandates that a registered

trademark must be used 3 months prior from the date of filing of an application

and 5 years from the date of registration. According to the petitioner, the

prolonged non-use of the impugned mark reveals that the first respondent had no

intention of using the trademark at the time of its registration, which indicates bad

faith.

10. According to the petitioner, the first respondent had obtained

registration by using the mark “PHYSIOLAC” to prevent other legitimate users

including the petitioner from registering or using the mark “PHYSIOLAC”.

According to the petitioner, the impugned trademark registration in the name of https://www.mhc.tn.gov.in/judis

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the first respondent is illegal, malafide and contrary to the provisions of the Act.

According to the petitioner, the impugned mark has been adopted in bad faith with

intention of frustrating the rights of genuine users and continuance of the

impugned mark in the Register of Trademarks is detrimental to the business of the

petitioner.

11. On the other hand, the first respondent has filed a counter affidavit

denying the contentions of the petitioner. They contend as follows:-

(a) They secured registration for the trademark “PHYSIOLAC AR” in the

year 2016, evidencing a bona fide intention to operate in the specialized segment

of baby food and food substances for children adapted for medical use, on a

'proposed to be used' basis.

(b) The petitioner is not a person aggrieved as contemplated under Section

47 of the Act. According to the first respondent, Section 47 of the Act has been

judicially interpreted to require demonstration of actual damage or injury in a

practical business sense.

(c) According to the first respondent, the requirement of the petitioner to

demonstrate actual damage or injury must exist not only at the time of filing of the

petition but also continue until final determination, which the petitioner has failed

to demonstrate.

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(d) Despite its international acclaim, the petitioner, an entity based in

France, has neither established any commercial presence nor conducted any

business activity in India under the impugned mark. No evidence has been

produced by the petitioner to demonstrate; (a) any sales or business operation in

India; (b) marketing or promotional activities within Indian territory; (iii)

distribution networks or channels in India; and (iv) consumer recognition or

goodwill in the Indian market.

(e) The first respondent obtained registration of the mark “PHYSIOLAC

AR” on 30.09.2016, through a bona fide and lawful process after complying with

the requirements of the Act. The first respondent applied for the impugned mark

with a genuine intention to use it in the course of trade, specifically for goods in

the medical nutrition segment. The first respondent has consistently acted in good

faith with intention of building a reputable business under the impugned mark.

(f) The non-use of the first respondent's trademark “PHYSIOLAC AR” is

protected under Section 47(3) of the Act, which provides an exception for non-use

due to special circumstances in the trade. According to the first respondent,

Section 47(3) expressly recognizes that non-use resulting from restrictions

imposed by law or other external circumstances beyond the control of the

proprietor does not amount to abandonment or an intention not to use the mark.

(g) According to the first respondent, the non-use of the mark was not https://www.mhc.tn.gov.in/judis

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voluntary, but, was prompted by the receipt of a cease and desist notice form the

petitioner on 09.12.2016, shortly after the registration of the first respondent's

mark “PHYSIOLAC AR” ON 30.09.2016. Given the petitioner's international

stature and anticipated litigation, the first respondent prudently decided to

reconsider its business strategy to avoid brand dilution, market confusion, and

costly legal conflicts. According to the first respondent, this conduct

demonstrates the first respondent's bona fide intention to act responsibly and

protect the integrity of its brand while complying with the applicable laws.

(h) The cancellation petition filed by the petitioner in the year 2019 is

barred by limitation under Section 137 of the Limitation Act, 1963, as it was

initiated three years after the cause of action arose in 2016, following the first

respondent's registration of the trademark “PHYSIOLAC AR” on 30.09.2016.

According to the first respondent, permitting the delayed applications without

valid justification encourages the abuse of the legal process enabling frivolous and

vexatious litigation. According to the first respondent, the delay in filing the

cancellation petition by the petitioner is unexplained and unjustifiable,

demonstrating a lack of diligence. According to the first respondent, the petitioner

being a commercially sophisticated entity failed to act within the prescribed period

and cannot now be permitted to circumvent procedural safeguards under the guise

of pursuing justice.

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(i) Failure to address any grounds under Section 57 of the Act or its related

provisions indicates a lack of diligence and weakens the foundation of the

petition. This omission suggests that the petition lacks merit, particularly

concerning the claims of wrongful registration or error in the register under

Section 57 of the Act and seeking to limit their arguments under the ambit of

Section 47 of the Act is to be viewed as an attempt to better a case which was non-

existent.

(j) The absence of substantive arguments under Section 57 of the Act not

only undermines the petitioner's case but also fails to provide necessary clarity for

the adjudicating authority to determine whether rectification is warranted.

Therefore, the claim of the petitioner under Section 57 of the Act remains

unsubstantiated and should be dismissed for want of evidence and arguments.

(k) The petitioner has failed to adduce sufficient evidence for the use,

recognition or promotion of its mark in India, thereby rendering its claim of well-

known mark under the Act untenable. As per Sections 2(1)(zg) and 11 of the Act

a trademark is considered well-known mark based on various factors including its

recognition by the public; the extent and geographical area of its use and

promotion; the number of consumers; and the record of enforcement of the

trademark rights. According to the first respondent, the petitioner has not met the

threshold requirement under the Act to prove that their mark is a well-known mark https://www.mhc.tn.gov.in/judis

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in India. The petitioner has not provided any substantial evidence of the mark's

use in India or its consumer recognition. While the petitioner may have presented

sales figures from global markets and promotional materials, they have failed to

provide any concrete evidence of actual sales, consumers, or distribution networks

in India. Furthermore, mere brochures and promotional materials do not suffice to

establish the well-known status of a mark in India, especially when the mark has

not been demonstrated to be widely recognized by the public in India. In the

absence of evidence proving the extent and geographical spread of use in India

including sales figures and consumers outreach, the petitioner's claim of well-

known status is unsustainable.

(l) The first respondent's trademark “PHYSIOLAC AR” was registered on

30.09.2016, well before the petitioner obtained its trademark registration on

12.02.2020, albeit for the mark “PHYSIOLAC” under Class 99 as against the

mark of the first respondent “PHYSIOLAC AR” under Class 5. This clear

chronological precedence establishes the first respondent as the prior registered

proprietor of the mark in question.

(m) Section 28 of the Act clearly vests the registered proprietor of a

trademark with exclusive rights to use the mark in connection with the goods or

services for which it is registered. It further confers the right to prevent others

from using identical or deceptively similar marks for similar goods or services, https://www.mhc.tn.gov.in/judis

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which could lead to consumer confusion or dilution of the trademark's

distinctiveness. The first respondent, as the prior registered proprietor, enjoys

these statutory protections, which are fundamental to maintaining the integrity of

the Trademark Register and preventing public deception. A trademark's

reputation and rights must be established within the territorial boundaries of India,

rather than relying solely on global goodwill or recognition.

(n) The petitioner has failed to demonstrate sufficient goodwill, reputation,

or market presence in India to assert rights over their mark. The petitioner's mark

has not acquired the requisite local recognition or consumer association in the

Indian market to claim prior use or adoption.

12. The learned counsels for the petitioner as well as the first respondent

reiterated the contents of the affidavit filed in support of the petition as well as the

counter affidavit respectively, during the course of their submissions

13. In support of his submissions, the learned counsel for the first

respondent drew the attention of this Court to the following authorities:-

(i) Hardie Trading Ltd. Vs. Addisons Paint and Chemicals Ltd.

[(2003) 11 SCC 92];

(ii) Infosys Technologies Ltd. Vs. Jupiter Infosys Ltd. [(2011) 1 https://www.mhc.tn.gov.in/judis

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SCC 125];

(iii) Jagatjit Industries Ltd. Vs. Intellectual Property Appellate

Board [AIR 2016 SC 478];

(iv) Eagle Potteries Private Ltd. Vs. Eagle Flask Industries Pvt.

Ltd. [AIR 1993 BOM 185];

(v) Godfrey Phillips India Ltd. Four-Square House Vs. Khoday

India Limited and Ors. [2023 SCC Online Mad 7201];

(vi) Sony Group Corporation Vs. Walkman Rubber Industries

and others, (T) CMA (TM) No.25 / 2023, dated 17.11.2023; and

(vii) Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto

Industries Ltd. And Others [AIR 2018 SC 167].

DISCUSSION:-

14. The learned counsel for the petitioner primarily laid emphasis to Section

47 of the Act and submitted that due to non-usage of the trademark “PHYSIOLAC

AR” by the first respondent for more than 5 years and 3 months, the trademark

registration obtained by the first respondent has to be cancelled. The learned

counsel for the petitioner did not lay emphasis on Section 57 of the Act, which

enables this Court to cancel a trademark registration if the same was granted

wrongfully. Therefore, this Court has to consider only as to whether the petitioner https://www.mhc.tn.gov.in/judis

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has satisfied the requirements of Section 47 of the Act for seeking cancellation of

the first respondent's trademark “PHYSIOLAC AR” on account of its non-usage

for more than 5 years and 3 months, which enables this Court to cancel trademark

registration.

15. The intention behind Section 47 of the Act is to prevent hoarding of

trademarks. It stipulates that a registered trademark may be taken off from the

Register, in case of non-use, if the trademark was registered without any bona fide

intention on the part of the applicant to use it and there has in fact been no bona

fide use of the said trademark for the time being up to a date three months before

the date of application and a period of 5 years or longer from the date on which

the trademark was registered had elapsed during which there was no bona fide use

of the said trademark. Section 47 of the Act reads as follows:-

47. Removal from register and imposition of limitations on ground of non-use.

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the High Court by any person aggrieved on the ground either--

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for

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registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or

(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:

Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the Registrar or the High Court, as the case may be, is of opinion that he might properly be permitted so to register such a trade mark, the Registrar or the High Court, as the case may be, may refuse an application under clause (a) or clause(b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide https://www.mhc.tn.gov.in/judis

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use of the trade mark by any proprietor thereof for the time being in relation to--

(i) goods or services of the same description; or

(ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered.

(2) Where in relation to any goods or services in respect of which a trade mark is registered--

(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-

use of the trade mark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for acceptance in a particular place in India or for use in a particular market outside India; and

(b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the Registrar or the High Court, as the case may be, is of opinion that he might properly be permitted so to register such a https://www.mhc.tn.gov.in/judis

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trade mark, on application by that person in the prescribed manner to the High Court or to the Registrar, may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.

(3) An applicant shall not be entitled to rely for the purpose of clause(b) of sub-section(1) or for the purposes of sub-section(2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.

16. In Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. [(2008) 10

SCC 766], the Hon’ble Supreme Court opined that a registered trademark confers

a valuable right upon the registered proprietor. Therefore, the intention to use the

trademark ought to be genuine and real. If a person does not have any bona fide

intention of using the trademark, he is not expected to get his trademark registered

nor prevent any other person from using the same. In such a way, trafficking of

trademarks is restricted.

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17. In Neon Laboratories Ltd. v. Medical Technologies Ltd. [2016 (2) SCC

672], the Hon’ble Supreme Court placed reliance on Section 47 of the Act, which

postulates that a registered trademark may be taken off the Register in case there is

no bona fide use of the trademark for a continuous period of 5 years and 3 months.

In the said case, the Appellant-Defendants did not use their trademark for 12

years, which inferred that they had abandoned their trademark at some point

during that period. The legislative intent behind section 47 is to prevent hoarding

of trademarks in case of non-utilization. The applicant of a trademark does not

have a permanent right over their trademark. Such a right is lost if it is not

exercised within a reasonable time.

18. It is an accepted legal position that the one pleading non-user must

prove it and in that regard, courts across the country have held a consistent view in

a plethora of cases, including the decision of the Hon'ble Supreme Court in

Kabushiki Kaisha Toshiba (cited supra).

19. Under Section 47 of the Act, an application may be filed by any person

aggrieved with the registration of the trademark. Section 47(1) of the Act deals https://www.mhc.tn.gov.in/judis

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with two scenarios, under which, a registered trademark may be subject to

removal. The circumstances in which a registered trademark can be considered

for cancellation are as follows:-

(a) Absence of bonafide intention:-

The bonafide intention is in the context of use of the trademark. If the

person who registered the trademark did not plan to actually use it for the goods or

services listed and in fact, has not used until three months before someone applies

for its removal, the trademark can be taken off/removed from the register.

(b) Non-use of the trademark:-

Section 47(1)(b) of the Act provides another ground for removal, wherein,

if it is established by the applicant that there has been no bonafide use of the

trademark for a continuous period of 5 years from the date of registration of the

mark and 3 months prior to filing the application for registration, then, in that

case, the trademark in question is liable to be removed.

20. There are certain exceptions to the general non-use laid down under

Section 47(1) of the Act. A registered trademark may not be removed if the

circumstances meet the conditions outlined in the proviso to Section 47(1) read

with Section 46 of the Act, which include:

(a) A company is in the process of being incorporated under the Companies https://www.mhc.tn.gov.in/judis

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Act, 1956, and the current owner of the trademark plans to transfer the trademark

to the new company soon.

(b) The trademark owner plans for the trademark to be used by a registered

user after the trademark's registration.

(c) The applicant has been allowed to register an identical/similar trademark

under Section 12 of the Act.

(d) If the trademark is used bonafide for similar or associated goods or

services, the High Court or the Registrar might decide not to remove it.

21. Under Section 47(2) of the Act, if a trademark has not been used in

specific areas or for particular markets, whether inside or outside India, and

another person is allowed to register a similar trademark under Section 12 of the

Act, then the Tribunal may impose restrictions on the original trademark on the

basis of an application filed before the High Court or the Registrar. These

provisions ensure that trademarks are actively used and are not just registered

without any real intention of being used. If a trademark has not been used by a

company or a proprietor for a long time, it can be removed from the register.

22. Further, Section 47(3) of the Act provides another exception to removal

of the trademark due to non-use. It provides that if there are special https://www.mhc.tn.gov.in/judis

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circumstances, like legal restrictions or regulations preventing the use of the

trademark, and most importantly, these circumstances are not created with an

intention to stop using the trademark, then in that case, the non-use would not

count against the trademark owner. The essential point is, if there is a valid reason

why the trademark could not be used, the owner would not loose the trademark

because of non-use.

23. Insofar as the case on hand is concerned, the following are the

undisputed facts:-

(a) Ever since the first respondent obtained trademark registration for its

trademark “PHYSIOLAC AR” in 2016, they have not put to use the said

trademark for their business activities.

(b) The first respondent is not dealing with the products for which they had

obtained trademark registration under the trademark “PHYSIOLAC AR”, through

application No.2897583 under Class 5.

(c) The first respondent has also admitted as seen from their pleadings that

they are presently having an established business engaged in event management

and they are not involved in the business of dietary formulation and child care

products, which are the core business of the petitioner.

(d) The first respondent had obtained trademark registration for their https://www.mhc.tn.gov.in/judis

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trademark “PHYSIOLAC AR” only on 'proposed to be used' basis. The first

respondent claims protection of their trademark registration only under Section

47(3) of the Act, which provides that if there are special circumstances, like legal

restrictions or regulations preventing the use of the trademark, cancellation of the

trademark cannot be permitted under Section 47 of the Act. However, according

to the first respondent, only on the ground that there was an imminent threat of

cancellation of their trademark “PHYSIOLAC AR” from the petitioner, they did

not use the said trademark for their business activity.

24. The petitioner is a leading player in the health and beauty care products,

particularly, focused on baby and childcare products. Their mark “PHYSIOLAC”

enjoys protection through the trademark registration obtained in several countries,

including France, Cambodia, Hong Kong, Myanmar, Taiwan, the United States,

Vietnam, Sri Lanka and Tunisia. The respective trademark registrations obtained

by the petitioner have also been filed as documents, which have not been disputed

by the first respondent. The sales turnover of the petitioner's business under their

trademark “PHYSIOLAC” is huge and is beyond comparison to that of the first

respondent's turnover. The petitioner has obtained registration for the mark

“PHYSIOLAC” in Application No.3401439 under Class 5 for dietetic substances

for medical use, food for babies, and food for babies made of milk and cereals; https://www.mhc.tn.gov.in/judis

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under Class 29 for milk and milk products; and under Class 30 for cereals and

preparations made from cereals. The said registration is valid upto 02.11.2026.

25. The petitioner had also entered into a joint venture with an Indian

partner in the year 2017 and thereby incorporated a new company by name Gilbert

Jain Laboratory Private Limited in September, 2017. To strengthen its presence

in Indian market, the certificate of incorporation of the joint venture has also been

filed as a document before this Court by the petitioner.

26. Section 47(3) of the Act is an exception to the provisions of Section

47(1) and (2) of the Act, and the special circumstances must include legal

restrictions or regulations, that prevent the use of the trademark. In the case on

hand, the first respondent admits the non-usage of its trademark “PHYSIOLAC

AR”. But, at the same time, pleads special circumstances for its non-usage. They

have pleaded that only due to the fact that there was an imminent threat of

cancellation subsequent to the registration obtained by the petitioner for the

trademark “PHYSIOLAC AR”, they have not used the trademark “PHYSIOLAC

AR” till now for their business activities. The exception provided under Section

47(3) of the Act for non-usage does not empower the first respondent to seek

protection under those exceptions, since their plea does not fall under any of the https://www.mhc.tn.gov.in/judis

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categories of special circumstances, namely, (a) legal restrictions or regulations

that prevent use of the trademark; and (b) the non-usage is not intended to stop

using the trademark. Admittedly, the first respondent did not have any legal

restriction on account of any statutory regulation and they were not prevented

from using the trademark “PHYSIOLAC AR” The first respondent did not also

commence any business activity concerning the products for which they had

obtained trademark registration in respect of the trademark “PHYSIOLAC AR”.

Eventhough they had obtained trademark registration in the year 2016 itself, till

date, they have not started any business activity involving the products for which

they had proposed to use the trademark “PHYSIOLAC AR” as per the trademark

registration obtained by them.

27. As stated above, the petitioner is admittedly a leading player both in

India as well as in Abroad in respect of manufacture and marketing of a wide

range products in the health and beauty care sectors, particularly focused on

childcare products. They have also obtained trademark registrations all over the

world including India for their trademark “PHYSIOLAC”. The reason given by

the first respondent for the non-usage from 2016 till date is untenable, as despite

the fact that there was no legal embargo for them to use the mark, they have not

been using it. Though registration was obtained in the year 2016 itself, they have https://www.mhc.tn.gov.in/judis

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not used the trademark “PHYSIOLAC AR” for more than 5 years and 3 months

prior to the filing of this petition. Therefore, for the reasons stated above, the

petitioner has satisfied the requirements of Section 47 of the Act for the purpose

of cancelling the trademark registration obtained by the first respondent for the

trademark “PHYSIOLAC AR”. It is clear that only with malafide intent to ride

over the reputation and goodwill of the petitioner's trademark “PHYSIOLAC”

internationally in India, the first respondent had obtained trademark registration

for the trademark “PHYSIOLAC AR” in India under Class 5 pertaining to the

products which are identical products for which the petitioner had already

obtained registration under the very same trademark “PHYSIOLAC” and they are

also having a high reputation and goodwill in the international market, which off-

late has also gained reputation in India as well.

28. The trademark registration granted by the second respondent for the

trademark “PHYSIOLAC AR” in favour of the first respondent is contrary to the

provisions of the Trade Marks Act for the reasons stated supra and therefore,

necessarily, on account of its non usage by the first respondent, it has to be

cancelled under the provisions of Section 47 of the Act. The impugned mark

adopted by the first respondent is in bad faith with the intention of frustrating the

rights of genuine users and therefore, continuance of the impugned mark will be https://www.mhc.tn.gov.in/judis

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detrimental to the business of the petitioner. This Court has also considered the

proposition of law laid down in the decisions relied upon by the learned counsel

for the first respondent cited supra and only in accordance with the well settled

propositions, this Court is allowing this petition.

29. In the result, the second respondent is directed to remove the trademark

“PHYSIOLAC AR” bearing application No.2897583 in Class 5 standing in the

name of the first respondent from the Register of Trademarks, within a period of

four weeks from the date of receipt of a copy of this order. Accordingly, this

petition is allowed as prayed for with costs.

11.12.2024

rkm Index:yes Neutral citation: yes

To

The Registrar of Trade Marks, Trade Marks Registry, Chennai.

https://www.mhc.tn.gov.in/judis

25 of 26 (T)OP(TM) No.481 of 2023

ABDUL QUDDHOSE,J.

rkm

(T) OP (TM) No.481 of 2023

11.12.2024

https://www.mhc.tn.gov.in/judis

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