26 August 2019

Use of same word in company name – Remedies available under both Companies Act and Trademarks Act

26th August

In a case involving use of word ‘Aglow’ in the corporate name also by the defendant, the Bombay High Court has granted permanent injunction against the defendant.

It observed that the defendant had no apparent reason for adopting a mark (with modification) belonging to the plaintiff and did not lead evidence as to how he decided to use the word ‘Aglow’.

The High Court was of the view that drugs are poisons and not sweets and that confusion between medicinal products of manufacturers may lead to threat of life. It also noted that since the defendant came on the scene at a later stage, use of the name cannot be said to be a bonafide one.

The Court in the case of Aglowmed Ltd. v. Aglow Pharmaceuticals (P) Ltd. also rejected the defense that plaintiff having lodged a complaint under Section 22 of the Companies Act, 1956, the present suit for infringement of trademark was not maintainable. It held that plaintiff can have two independent rights of action against the defendant, first under Sections 20 and 22 of the Companies Act and second a suit for infringement of trademark under the Trademarks Act.

The Court observed that both the remedies operated in different fields and that under Section 22 of the Companies Act, the Central Government has no jurisdiction to grant any injunction.

The plaintiff was also held not guilty of delay. The Court observed that infringement of trademark carried from time to time would give a recurring course of action to the trade mark holder.

It was of the view that whether the earlier infringement continued, or a new infringement took place, cause of action for filing a fresh suit would obviously arise in favour of the plaintiff who is aggrieved by such fresh infringements of trade mark or fresh passing off actions alleged against the defendant.

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