The use of a mark for export trade is sufficient to maintain an action for trademark infringement and passing off

The delay coupled with non-disclosure of knowledge of use can affect obtaining an interim injunction which is a discretionary relief.

The Plaintiff, Ajanta Pharma Ltd (Ajanta), the registered proprietor of the mark AMADAY filed suit against Zuventus Healthcare Ltd, (Zuventus) before the Delhi High Court alleging trademark infringement, delivery up, etc., and to restrain the latter from using the mark ANADAY. This post discusses the injunction application filed by Ajanta and the order passed by the Delhi High Court. The decision appears more fact-based in terms of knowledge of the use of the mark ANADAY by Ajanta.

Ajanta in the suit contended: 

1. They are the registered proprietor of the mark AMADAY in class 5, which is in use since 2001 to treat blood pressure and heart disease. 
2. AMADAY product is manufactured in India and exported, which amounts to use as per the Trademarks Act. 
3. By seeking registration, they are not precluded from marketing the product in the country. 
4. In February 2008, Zuventus applied for registration of the mark ANADAY, which was opposed by Ajanta, and subsequently, the mark was abandoned. In 2016, Zuventus again applied for the mark ANADAY, which is opposed by Ajanta, and the proceedings are ongoing before the Trademark Registry. 
5. Ajanta claims the counter statement filed by Zuventus is not uploaded on the Registry website and not available in their records. 
6. As Zuventus has not assailed the abandonment order for the application filed in 2008, Ajanta was under the belief that the ANADAY mark is not in use.  
7. Ajanta being the prior adopter, user, and registered proprietor of the AMADAY mark, is entitled to an injunction. 

Zuventus response and contentions:

• Ajanta has no license for the sale of AMADAY product in India and is not sold in India, hence, there is no cause for confusion. 
• There is suppression of material facts as Ajanta was aware of the use of the ANADAY mark since 2008 and cannot claim injunction in the year 2019. Ajanta has acquiesced to the use of Zuventus. 
• There is delay in filing the suit. Even the second application for ANADAY has been filed claiming ‘use’ since 2008, and invoices evidencing use have been uploaded on the Registry website. 
• Adoption of the mark ANADAY is bona fide as it is coined by the amalgamation of the name of the molecule used in the treatment of breast cancer i.e., ANASTROZOLE and the fact the tablet is taken once a DAY.
• There will be no confusion among the trade and public as AMADAY product is not sold in India. Further, ANADAY drug is sold only on the prescription of Oncologist and not any other Doctor, which further negates the likelihood of confusion.

Court Ruling

The Court, after considering the pleadings, arguments and case laws held:

• The contention that AMADAY product is not in use in India, and thus, an action for infringement will not lie, is not sustainable. There is no requirement under the Act to use the mark before enforcing the right to prevent the use of the rival mark. Once the trademark is registered under the Act, a suit for infringement is maintainable without requiring the registered proprietor to show the mark’s actual commercial use. 
• Further, as per Section 56 of the Trademarks Act, use of the mark for goods exported from India is deemed to constitute use of a trade mark in India.
• In the opposition proceedings, documents on record show that Zuventus has contended having obtained approval for manufacturing Anastrozole Tablet under the trademark ANADAY in the year 2008 and immediately commenced sale. Though Ajanta denies receiving the counter-statement, they continued to participate in the proceedings. They addressed a letter to the Registry, relying on the contents of the notice reserving rights to file evidence at a later stage. Thus, there is a suppression of material facts. 
• The abandonment of the application for ANADAY does not mean abandonment of the sale of the drug under the mark ANADAY. In the circumstances, Ajanta, having not verified whether ANADAY is being sold in the market despite notice, is bound to suffer the consequences of delay in seeking an injunction.   
• Moreover, even if there is delay, it requires to be seen whether adoption of the ANADAY mark is dishonest which entitles Ajanta an injunction. Zuventus has coined the word ANADAY by taking the first three letters of ANASTROZOLE and joining the word DAY as the tablet is required to be administered once a day. The contention regarding the confusion caused to chemists is also negated as Ajanta’s product AMADAY is only exported and not available in India. 

In light of the above findings, the Court dismissed the injunction application filed by Ajanta.