CONTENTION 1: THAT THERE HAS BEEN TRADEMARK INFRINGEMENT

BY THE RESPONDENT

It is humbly submitted before the Honourable Supreme Court that there has been violation of
trademark rights of the Appellant under the Trademarks Act of 1999 (hereinafter referred as
Trademarks Act).

1.1 That there is trademark infringement under the Trademarks Act

It is humbly submitted that the Appellant had attained the registration of the trademark
‘Verumguard’ under its title on 01/01/2018.1
As per Section 28, Trademarks Act, the Appellant acquired the exclusive right to the use of
the trade mark in relation to the goods or services in respect of which the trade mark is
registered and to obtain relief in respect of infringement of the trade mark in the manner
provided by the Trademarks Act.
Furthermore, in accordance with Section 29(1) & Section 29(2) of the Trademarks Act, a
registered trade mark is infringed by an unregistered proprietor, when it -
1) uses a mark which is ‘identical’ with the registered trademark in the course of trade,
or
2) uses a mark ‘deceptively similar’ to the trade mark in relation to goods or services in
respect of which the trade mark is registered, &
3) uses it in such manner so as to render the use of the mark ‘likely to be taken as being
used as a trade mark.’
Section 29(2)(b) vividly postulates that a registered trade mark is infringed by an unregistered
proprietor if it uses in the course of trade, a mark which because of -
1) its identity with the registered trade mark and the identity of the goods or services
covered by such registered trade mark,
2) is likely to cause confusion on the part of the public, or
3) which is likely to have an association with the registered trade mark.
4) Section 29(3) substantiates that, in such case the court shall presume that it is likely
to cause confusion on the part of the public.

To substantiate it furthermore, Section 29(4) contemplates that a registered trade mark is

infringed by an unregistered proprietor if it uses in the course of trade, a mark which—

a) is identical with or similar to the registered trade mark; and

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 b) is used in relation to goods or services which are not similar to those for which the
trade mark is registered; and
c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute
of the registered trade mark

Additionally, Section 29(5) provides that a registered trade mark is infringed by an

unregistered proprietor if it uses in the course of trade, a mark as his trade name or part of his
trade name, or name of his business concern or part of the name, in respect of which the
trademark is already registered.

As per Section 29(6), the Respondent can be held to be using the registered trademark if it-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the
registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
Herein, the Respondent has been affixing the registered trademark of the Appellants
on its goods, and thus amounts to ‘using the registered trademark’.

Besides that, Section 29(7) contemplates that if the Respondent uses the registered trademark
without the license from the owner, then it amounts to infringement.

It is submitted that in the present case, the following points can be safely concluded in its
application-

1) The Respondent used the trademark ‘Verumguard’ without taking any license from
the Appellant, since it has acquired the registration of the same on 01/01/2018.
2) The Respondent has been using the trademark even after the Appellant got it
registered under Class 5, i.e., since 2018 till present and has not stopped infringing the
trademark rights of the Appellant.
3) The mark used is not only ‘identical’ but exactly the same as that of the registered
trademark of the Appellant.
4) The mark is ‘deceptively similar’ as the registered trademark, and has been used as is
‘likely to be taken as that registered trademark’.
 5) It causes confusion in the minds of the general public due to which there is a chance
of ‘likelihood of confusion’ in regards to the registration of the trademark.

Thus, in light of the above points, the Respondent should be held liable for ‘direct
infringement’ of the registered trademark of the Appellant.

1.2 That there is deceptive similarity by the use of ‘Verumguard’ by the Respondent
It is humbly submitted before the Honourable Court that the use of the registered trademark
of the Appellants, i.e., ‘Verumguard’ by the Respondent causes deceptive similarity.

It has been held in Sun Pharma Laboratories Limited V. BDR Pharmaceuticals

International Pvt. Ltd that even dissimilar medical products within same class could not
exist if they create a sense of confusion as where medicinal products are involved, the test to
check the likelihood of confusion should be strictly applied. In the case of non-medicinal
products, confusion only creates economic loss but, in the case of medicinal products, it may
have adverse consequences on the health and life of the individual. Also, it was held that
there should be sufficient similarity between the two products to deceive the consumers or to
create confusion in the minds of average intelligence person between the two brands.
It is evident from the factual matrix that the trade name selected by the Respondent is exactly
same as the registered trademark of the Appellant.
In the landmark judgement of Cadila Healthcare Vs Cadila Pharmaceutical Ltd. the court
observed that because of the diversified population of the country and varying infrastructure
of the medical profession due to language, urban-rural divides, etc. and with the probabilities
of medical negligence, it is important that confusion of marks should be strictly prevented in
pharmaceuticals and drugs. The Court, thereby, held that in case of medical products, more
precautions and care must be taken in the names of the brand, therefore, being phonetically
similar shall amount to being deceptively similar.
Also in the case of Kaviraj Pandit Durga Dutt V. Navaratna Pharmaceuticals
Laboratories the honourable Supreme Court had held that in an infringement action, if the
essential features of the plaintiff’s mark have been adopted by the defendant, it is immaterial
whether the get-up, packaging or other writing or marks on the goods or packaging show
marked differences or indicate a different trade origin
In this case of Astra-IDL Limited v TTK Pharma Limited (AIR 1992 Bom 35), the Bombay
High Court commented that scheduled drugs which were supposed to be sold on prescription
were sold without prescription in India, which reduced the weight to be given to this factor
when evaluating deceptive similarity.
In Larsen & Turbo Ltd. v Laxmi Narain Trades & Ors. it was held that the tradename of the
Defendant as LNT is identical and deceptively similar to the already registered trademark of
the Plaintiff- L&T and is likely to create confusion in the minds of the general public. Hence,
the Defendants were not allowed to continue with their tradename of LNT.

It is pertinent to note that in the present case the Appellant had to do a lot of research and
investments as Zovid-09 has forced the pharmaceutical companies to change their priorities
in R&D activities and stopped many existing projects and initiated research to invent suitable
drug & vaccine to control and treat the disease. In the case of Sumeet Research and
Holdings (P) Ltd. v. Sipra Appliances the Court derived three tests to test if there is
trademark infringement or not. The Court perused the record and on appreciation of evidence,
the Court was of the view that the suit of the Appellant deserved to be decreed. In the opinion
of the Court, the triple identity test was satisfied. The test being —
 Firstly, use of identical or deceptively similar trademark.
 Secondly, use of trademark in relation to identical goods.
 Lastly, use of trademark in relation to identical goods having identical trade channels.

1.3 That the Respondent had not filed any Objections to the Registry when the
Appellant registered the trademark
It is humbly submitted that one has to not only be aware of their rights but also be
vigilant enough to use it for their advantage. Vigilantibus non dormientibus is a legal
maxim which means that the party cannot sleep over his or her rights. In this particular
context, the Appellant received the registration certificate on 01/01/2018 but there were
no objections filed by the Respondent. It is to be noted that under Section 21(1) of the
Trademarks Act, any person may, within 4 months from the date of advertisement or re
advertisement of an application for registration give notice in writing in the prescribed
manner and on payment of such fees as may be prescribed, to the Registrar of opposition
to the registration.

1.4 That there was mala fide intention on part of the Respondent
It is to be noted that in the case of Mars Incorporated v Kumar Krishna Mukerjee
and Ors. the Court was of the opinion that “as in the case of infringement of registered
 trade mark or passing off action, the intention and object of infringer is mainly to trade or
cash upon widespread and invaluable goodwill and reputation established over the years
at huge cost by the plaintiff and in the process there occurs a dilution of the trade mark if
goods manufactured and sold by infringer happens to be of poor quality, the underline
intention of a person who proposes to adopt either same or deceptively or confusingly
similar trade mark or even the Corporate name is to encash and become unjustly rich by
trading upon the goodwill and reputation of the plaintiff”.

The court in the case of LT Foods Limited v. Sulson Overseas Pvt. Ltd., (192) 2012

DLT 373 held that “The foundation of the law of infringement of the trademark,
copyright and of passing off is honesty. No one shall be permitted to enrich himself on
the goodwill and reputation built up or earned by anyone else.” It is important to note
that then the Appellant came to know about the trademark application which was filled
by the Respondent, the Appellant was vigilant enough to file objections.
It is pertinent to note that in the present case, the Respondent has been using the
trademark ‘Verumguard’ even after the Registry of Trademarks accepted the registration
of the trademark ‘Verumguard’ for the Appellant, i.e., since 01/01/2018. It vividly
amounts to infringement of the trademark by the Respondent as per Section 29.

1.5 That there is use of arbitrary mark

Arbitrary Mark means a trademark, service mark, or trade name that is not indicative of the
nature of the goods or services 2 and according to the Black's Law Dictionary 2nd Ed a
trademark or service mark that is unique, usually not descriptive is an arbitrary trademark.
Section 29(9) of the Trademarks Act clearly postulates that where the distinctive elements of
a registered trade mark consist of or include words, the trade mark may be infringed by their
visual representation.
In A.R. Khaleel and Sons vs Registrar of Trade Marks in India, (AIR 1963 Mys 122) it was
held that the expression ‘Speedmaster’ is a combined word which is not found in the English
dictionary and that for purpose of Section 6(1)(c) of the Trademark Act, 1940 it amounts to
an invented word, wherein reference was also made to Re, Standard Woven Fabric Co.
Appln (page 53 of 35 R.P.C), Dunlop Rubber Co., Ltd. v. Booth (p. 134 of 59 R. P. C) & Re,
Hallgarten's Appln (p. 105 of 66 R. P. C.).  In the first of these cases, the question was
2
Arbitrary mark.” Merriam-Webster.com Legal Dictionary, Merriam-Webster, https://www.merriam-
webster.com/legal/arbitrary%20mark. Accessed 23 Jul. 2021
whether the word "Stanwal" was an invented word. On the applicant therein, explaining that
this expression as brought about by combining the first parts of the two words "Standard" and
"Walpole", it was conceded on behalf of the Registrar that "Stanwal" was an invented word.

In the second case, the question was as to whether the word "Trakgrip" could be registered;
the registration of that word seems to have been permitted, mainly on the ground that it had
acquired familiarity from the fact that it had been long and extensively used in connection
with the particular articles in which the applicants had been dealing.

In the third case, the word "Whisqueur" was allowed to be registered on the ground that it
was an invented word, though it was the result of combining parts of the words "Whisky" and
"Liqueur".

In Ram Rakhpal v. Amrit Dhara Pharmacy, , Desai, J.( AIR 1957 All 683) while
considering the question whether the word "Amritdhara" was an invented word, has observed
as follows:

"It is a compound word formed out of the words "amrit" and "dara", both of which are
common words to be found in dictionaries and have meanings which are known to the public.
The word "Amritdhara" may not be found in a dictionary, because a dictionary does not
contain all compound words. But the absence of a word in a dictionary is not the test of its
being an invented word.”

In arguendo, it is humbly submitted that the Appellant used the trademark ‘Verumguard’
which is a unique term, and hence an arbitrary mark. Furthermore, ‘Verum’ as per Latin
dictionary means ‘truly, reality, fact, or, certainly’3 and ‘Guard’ as per Merriam Webster
means ‘defend, protect, shield, or safeguard.’4

Consequently, the use of the arbitrary mark by the Respondent infringes the common law
doctrines, apart from the provisions of the Trademarks Act.

3
http://latin-dictionary.net/search/latin/VERUM
4
“Guard.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-
webster.com/dictionary/guard. Accessed 23 Jul. 2021
2 That Futis Biotech is a user of the trademark and has the right to use it

2.1 That the trademark ‘Verumguard’ has been in use by Futis Biotech
2.1.1. It is hereby contended that the facts presented clearly and only mention that there
was no drug in market by the name ‘Verumguard’ which was sold by Futis Biotech,
however, this does not amount any validation to presumptions that the trademark hasn’t
been used in the time period from the date of application or before that.

2.12 The application of the Futis Biotech was accepted by the Registry of Trademarks
and since there must not have been any third-party oppositions, therefore, the trademark,
‘Verumguard’ must have been registered. Further, in Hardie Trading v Addison Paint
and Chemicals, the Supreme Court of India analysed the aspect of “usage” under the act
and stated that “to the use of a mark in relation to goods, shall be construed as a reference
to the use of the mark upon, or in any physical or in any other relation whatsoever, to
such goods” and thereby held that use may be other than physical and it should not be
merely limited to physical use on the goods or to sale of goods bearing the trademark;

2.13 It has been held that the burden of proof of non-use lies on the applicants for
rectification of register, and they have to show that there was no bona fide intention to
use the mark or any bona fide use of the trademark. Herein, the appellant has not only no
mala fide intent to not use the trademark, but rather the appellant has been a bona fide
user of the trademark as has been contended hitherto and will be substantiated further. In
the absence of any proof by the respondent, the appellant will be deemed to a bona fide
user of the Trademark.

2.14 Delhi High Court in Ishi Khosla vs Anil Aggarwal; observed “In a modern world
where information is a key factor and the information is available with the click of a
mouse on a computer from the internet, it’s an era of expansion. In today’s world an
`idea’ which may be unique and ‘out of box’ can click and become popular overnight and
within no time.”
In the light of the following judgement, it is hereby contended that the trademark
‘Verumguard’ has been used since 2016.
2.14 In JN Nicholas Ltd vs Rose it was held that “The user of the mark does not
postulate actual sale of the goods bearing such mark, user can be in any form or way and
does not necessarily mean and imply actual physical sale and even mere advertisement
without having even, the existence of the goods can be said to be a user of the mark.”
The same argument is humbly contended before the Hon’ble court in the present case,
the trademark ‘Verumguard’ could have been in use as belonging to Futis Biotech.
To substantiate it furthermore, in Whirlpool Case N.R. Dongre And Ors. vs Whirlpool
Corpn. And Anr. the Apex Court held that the advertisements in magazines, newspapers,
television, video films, cinemas circulated and made available in India even without
existence of goods in the Indian market amounts to use of the trademark in India in
addition to the mark.
2.15 In Uniply Industries Ltd vs Unicorn Plywood Pvt. Ltd. &Ors, it was observed by
the Supreme Court of India that even prior, small sales of goods with the mark have been
sufficient to establish prior use. Bona-fide test of marketing, promotional gifts and
experimental sales in small volume may also be sufficient to establish a use of the mark.

2.2 That the trademark cannot be removed u/Sec 47 even if there was non-use by the
Futis
Biotech
2.21 According to Section 47 of the Trademarks Act, use of a trademark has to be
shown by the registrant if an application is filed by an aggrieved person stating that the
said trademark was registered without bona fide intention on the part of the applicant for
registration that it should be used in relation to those goods or services by him.
Moreover,
there has to be use of the trademark up to a date three months before the date of the
application.
2.22 Removal of trademark from the register for non-use is allowed in case the trademark
has not been in use for a continuous period of five years from the date on which the
trademark is actually entered in the register. However, where the non-use is for a period
of less than five years, the person seeking to remove the trademark from the register has
not only to prove non-user from the requisite period but also has to prove that the
applicant for the registered trademark has no bona fide intention to use the trademark
when the application was made.
2.23 In the case at hand, as has been proved there exists no bona fide intention on the
part of the trademark owner, i.e., Futis Biotech. Moreover, the period of 5 years from the
date of registration of the trademark has not elapsed. The trademark was granted on
1/1/2018 and the period of 5 years would grant protection to Futis Biotech till 1/1/2023.
As the period under dispute is a protected period u/s 47, the trademark of Futis Biotech
cannot be removed even had there been non-use of the trademark.
In view of both the arguments, it is contended humbly before the Hon’ble Court that the
Appellant has been a bona fide user of the trademark even before the date of filing of
application of registration and used the trademark ‘Verumguard’. Hence, the plea of
Verum Institute being prior user does not hold ground and the trademark of Futis Biotech
cannot be challenged under any subsection of Section 47 of the Trademarks Act.