Delhi High Court dismisses appeal in pharmaceutical trademark filed by M/s. Maan Pharmaceutical Ltd,  Gujrat, against the order of Dist. Commercial Court, Saket, New Delhi which has restrained the use of trademark Buproex by M/s. Maan Pharmaceuticals.

The dispute was with respect to the ownership of the brand name. The manufacturing company disputed that they own the brand name Buproex as they are the product manufacturer.

Marketing companies will have a right to the trademark if they are registered trademark owners

On the other hand, the Delhi-based marketing company M/s. Mindwave Healthcare Pvt. Ltd. applied for the registration of the trademark on 12/12/2012. The aforesaid trademark was subsequently registered in 2016.

Click for more on Teademark

After filing an application for registration of a trademark in 2012, the marketing company contacted the manufacturer and sent him an email in 2013 to engage them as 3rd party manufacturer.

There was a series of email communication that took place between the parties with regard to the manufacturing of the drug Buproex.

In 2021, the marketing company stopped its manufacturing with MANN, and thereafter a dispute arose between the parties.

It was alleged by the manufacturer/MAAN that the marketing company MINDWAVE had signed one assignment deed through one of the directors.

On the other hand, such an assignment was disputed by MINDWAVE, stating that there is no reason why the brand name can be transferred without any consideration.

It is further argued that the document is merely a shameful document and was never acted upon, even if the claim of the MAAN is taken to be correct.

On the issue of priority, it was held by the court that registered trademark owners would have a preferential right over the actual manufacturer.

There is no rule that a Marketing company cannot have ownership of the trademark and in all cases manufacturer only has the right to the trademark.  

Click here to read more articles of the Author

In a separate judgment, the court's jurisdiction based upon the possible threat is considered, and it was decided that suit could be filed at any place where the plaintiff perceives the threat.

MAAN had challenged the court's jurisdiction on the ground that the suit was not filed on the basis of the company's registered office but based on the address of the company's sales office.

MINDWAVE argued that a suit could also be filed where the sale office is situated. Court held that suit filed by MINDWAVE is maintainable and rejected the application of MAAN. 

Advocates for MAAN: Sh. Saurabh Kirpal, Sr. Adv., and Sh. Shailen Bhatia.Advocates for MINDWAVE: Sh. Sushant Mahapatra.

For a copy of the judgment, contact the author: sushant@macecorpn.com

Click here to read more articles of the Author

Disclaimer:The opinion of the author is personal and based upon his understanding. The author is an Advocate practicing before Supreme Court and Delhi High Court.
https://thehealthmaster.com/2022/09/18/high-court-marketing-companies-will-have-a-right-to-the-trademark/