SPA/147/2009 of SHOBHAN LAL JAIN Vs DRUGS CONTROLLER and OTHERS

IN THE HIGH COURT OF UTTARAKHAND AT NAINITALSpecial Appeal No. 147 of 2009

Shobhan Lal Jain.

………. Appellant

Versus

The Drugs Controller & others.

.………. Respondents

Mr. Sanat Kumar and Mr. Siddhartha Sah, Advocates for the appellant. Ms. Anjali Bhargava, Advocate for respondent No. 1. Mr. Lok Pal Singh and Mr. Nikhil Singhal, Advocates for respondent Nos. 2 & 3.

JUDGMENT

Coram: Hon’ble Barin Ghosh, C.J. Hon’ble Servesh Kumar Gupta, J.

BARIN GHOSH, C. J. (Oral)

We are absolutely surprised that the appellant, in the facts and circumstances of the case, could at all file the writ petition and, after the writ petition was dismissed for cogent reasons, could prefer the present utterly frivolous appeal.

2. The fact remains that the appellant has registered trademark bearing No. 434499 dated 25[th] February, 1985, advertised in the Trademark Journal No. 1003 dated 16[th] March, 1991. Appellant has also another registered trademark bearing No. 555920 dated 6[th] August, 1997. These trademarks purport to allow the appellant to use the mark “JOLEN” in connection with cosmetics. Before the trademarks were, thus, registered, objection thereto was filed by respondent No. 3. Rejecting the objection of respondent No. 3, the trademarks were registered in the name of the appellant. At the instance of respondent No. 3, via Delhi High Court, the matter reached the Trademark Appellate Tribunal at Delhi. The Appellate Tribunal upheld the grant. Respondent No. 3, thereafter, approached the Delhi High Court in its writ jurisdiction. On the writ petition, an interim order was passed on the invitation of the counsel for the appellant to the effect that the appellant shall not take any action based on the order impugned in that proceedings till hearing of the petition. The

said interim order was made absolute. The writ petition is still pending and has not been heard. Therefore, in law, the registration of the trademark “JOLEN” in favour of the appellant has not reached finality. At the same time, respondent No. 3 approached the Madras High Court and, from there, obtained an interim order restraining the appellant from using the name “JOLEN” in connection with any of its products.

3. Therefore, as on the date of presentation of the writ petition, as well as on the date of the presentation of the appeal, and, even today, appellant has no proprietary right over the trademark “JOLEN” in law. The object of the writ petition was to obtain cancellation of the licence granted by respondent No. 1 in favour of respondent No. 2 to manufacture cosmetic goods. The basic contention is that respondent No. 2 has been licensed by respondent No. 1 to manufacture cosmetics, which the appellant is entitled to manufacture and sell under the brand name “JOLEN”, inasmuch as, in terms of Section 17D of The Drugs and Cosmetics Act, 1940, cosmetic shall be deemed to be spurious, if it is manufactured under name, which belongs to another cosmetic and, in terms of Section 18 of the said Act, no person is entitled to manufacture for sale or for distribution, or sell, or stock or exhibit or offer for sale, or distribute any cosmetic, which is not of standard quality, or is misbranded, adulterated or spurious. It is also being contended that, without following its own guidelines, respondent No. 1 has granted licence to manufacture to respondent No. 2. It has been stated that the affidavit, which is part of the guidelines, has not been submitted by respondent No. 2 to the effect that the products, proposed to be manufactured by respondent No. 2, will not infringe any trademark. Until such time, the matter pending in the Hon’ble Delhi High Court is decided; appellant, of his own, as recorded by the Hon’ble Delhi High Court, is not entitled to take any action based on the registration of the trademark in his favour. Therefore, placing reliance on the judgment of the Hon’ble Supreme Court, rendered in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., reported in AIR 2001 SC 1952, and, in particular, paragraph 34 thereof, is utterly misconceived.

4. We hold that there is no present right of the appellant in the trademark “JOLEN” in connection with cosmetics and, accordingly, his attempt to prevent respondent No. 1 from granting permission to respondent No. 2 to manufacture cosmetics, which may be sold under the name “JOLEN”, is utterly misconceived and, accordingly, the appeal fails and the same is dismissed. Interim order, if any, is recalled.

(Servesh Kumar Gupta, J.) 31.07.2013

(Barin Ghosh, C. J.) 31.07.2013