Bombay HC backs GSK in Paxil trademark row against Shreya Life Sciences

MUMBAI: The Bombay High Court has ruled in favour of listed biopharma company GSK Group (formerly GlaxoSmithKline Pharmaceuticals), which had sought cancellation of the registration of the mark 'Paxil' by Mumbai-based pharmaceutical firm Shreya Life Sciences Pvt Ltd.

The Indian subsidiary of the UK-based GSK PLC had urged the court to cancel the mark used by the local company in pharmaceutical and medicinal preparations. It argued that despite getting the mark more than two decades ago, Shreya Life Sciences had never used it and hence, under Section 47 of the Trade Marks Act, the registration was liable to be removed from the register of trade marks on account of non-use.

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Section 47 of the Trade Marks Act, 1999, allows for the removal of a registered trademark from the register or imposition of limitations due to non-use. In such cases, an aggrieved person can apply to the registrar or the high court if a mark has remained unused for more than five years, thereby preventing "trafficking" in trademarks. "In the present case, it is not in dispute that Respondent No. 1 has, after obtaining the impugned registration in the year 2005, not at any point used the said mark," observed justice Arif Doctoer.

Ruling in favour of GSK Group, the court said, "Respondent No 1 (Shreya Life Sciences) has, after obtaining the registration, simply squatted on the said trade mark and hoarded the same. It cannot be lost sight of that a trade mark by its very definition, is meant to be used as a source identifier in respect of goods and services and is thus meant to be used and not hoarded or traded." Before the court's order, Hiren Kamod, the advocate appearing for GSK Group, along with Bhavya Shah of A&P Partners, argued that the petitioner, being the first adopter and user of the mark on a global scale, was entitled to assert rights in respect of the mark even in India since the petitioner's products reflecting the ark were known to medical practitioners and consumers in India on account of the petitioner's spillover reputation.