The Commonness of the Common to Trade Argument
Order of the Delhi High Court in Glaxosmithkline Pharmaceuticals Ltd. V. Horizon Bioceuticals Pvt. Ltd & Anr. and more...
Case in Focus
The Delhi High Court in the recent case of Glaxosmithkline Pharmaceuticals Ltd. V. Horizon Bioceuticals Pvt. Ltd & Anr. (CS(COMM) 8/2023; decision dated 10 April 2023) has reiterated that the onus to establish the existence of the ingredients to substantiate a plea that a mark, or a part thereof, is common to the trade, is unquestionably on him who so asserts.
The contest was between plaintiff’s COBADEX versus the defendant’s COMODEX. The plaintiff alleged infringement and the defendant contended that “DEX” was common to trade.
Dealing with this contention, the Court said that to establish the defence of common to trade, merely citing marks of products containing DEX as a suffix is insufficient to substantiate a contention that DEX, as a suffix, is common to the trade in pharmaceutical preparations. This, requires the defendant to show-
substantial use, by the proprietors of the marks cited by it,
the extent of trade in products bearing the said marks, and
that the said marks pose a threat to the distinctiveness of the mark asserted by the plaintiff.
Else, would not be possible for the Court to return a finding that the mark of the plaintiff, or the part thereof which, according to the defendant, is common to the trade, is indeed so.
The most interesting part of the judgement is the discussion on Section 17(2)(b) of the Trade Marks Act. The Court notes that it would be even more impermissible for the defendant to plead that the plaintiff‘s mark, or a part thereof, has become common to the trade, thereby invoking Section 17(2)(b) by merely citing registrations, existing on the Register of Trade Marks, of names containing the asserted mark, or a part thereof. “Common to register” is qualitatively different from “common to the trade”. One may register a mark and leave it unused. Products bearing marks which stand registered in the Register of Trade Marks may never see the market, or may, at best, make sporadic appearances. Such registrations cannot divest the plaintiff‘s mark of distinctiveness, or disentitle the plaintiff to injunction. Section 17(2)(b) applies only where the asserted mark, or a part thereof, is common “to the trade”. The use of the article “the”, in Section 17(2)(b) is held to be significant and there is a clear difference between the expressions “common to trade” and “common to the trade”. What, therefore, section 17(2)(b) requires is commonness, of the asserted mark or part thereof, to the trade relating to the goods to which the mark pertains.
Section 17(2)(b) requires the Court to be satisfied of-
the existence of a trade in the article, or class of articles, in respect of which the plaintiff uses the asserted mark, and
common, i.e. frequent, customary or habitual use, in that way, of the mark or part thereof.
I couldn’t agree more with the view taken by Justice Hari Shankar. It is well settled that a mark may be common on the Register but may not be common to the trade. Further, whether a mark is common to trade requires appreciation of evidence which is a matter of trial. I am yet to see this argument succeed in recent times, wonder why this defence is still so “common”
Case I am reading
Central Park Estates Pvt. Ltd. & Ors. vs. Samvara Buildtech Private Limited & Anr (CS(COMM) 189/2017; decision dated 29th March 2023) ) highlights the perils of poor prosecution.
Quote I’m pondering
Carl Jung, the influential psychiatrist, on the value of knowing yourself:
"The world will ask you who you are, and if you don't know, the world will tell you."