CIRCUIT SITTING AT DELHI

ORDER(No.164/2012)

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 âAct) 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.

2. 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 âQUIKCLOT. From April, 2002 the applicant adopted stylized representation for its trade mark âQUIKCLOT, i.e.,

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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.

3. In India, the distribution of applicant product bearing trade mark âQUIKCLOT 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 âQUIKCLOT 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 âQUIKCLOT which action is pending.

4. 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 âQUIKCLOT under NO.1326454 in Class 5 in respect of âmedicinal 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. OBrien, Chief Financial Officer of the appellant company.

5. A copy of the rectification petition was sent to the respondent Mukesh Gupta on 23^rd August 2010 and returned unserved with remarks âLEFT by postal authorities on 14^th 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 âThe Statesmanâ (English) and âVeer Arjunâ (Hindi) on January 30^th 2012. The matter was listed for hearing on 26^th 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.

6. 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.

7. 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 applicants mark and is barred by statute. It is an offence under the law to steal and adopt someone elses 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 elses trade mark hijacks anothers reputation. We therefore hold the impugned mark is wrongly remaining on the register and without sufficient cause.

8. 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 âQUIKCLOT 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 âQUIKCLOTâ 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 appellants application for the mark âQUIKCLOTâ. As and when such applications come up for registration it shall be decided in accordance with law.

9. In the result, ORA/187/2010/TM/DEL is allowed and registered trade mark âQUIKCLOT bearing No.1326454 in Class 5 is hereby removed from the register of trade marks. There is no order as to costs.