Court finds no deceptive similarity between HASLAB’S DIGESTO and DIGESTO PLUS; emphasizes “DIGESTO” as a descriptive, common trade term; appeal dismissed for delay and lack of prima facie case
In a significant trademark dispute concerning homoeopathic medicines, the Delhi High Court recently upheld the decision of the Commercial Court, dismissing the appeal filed by Hahnemann Scientific Laboratory India Pvt. Ltd. against Meera Rastogi trading as Hahnemann Memorial Laboratory. The dispute centered on the use of the trademarks HASLAB’S DIGESTO and DIGESTO PLUS.
The appellant, Hahnemann Scientific Laboratory, claimed prior adoption and continuous use of the trademark HASLAB’S DIGESTO since 1971, asserting exclusive rights over the mark and alleging passing off by the respondent’s use of DIGESTO PLUS. However, the trial court had previously found that the appellant failed to provide documentary evidence of continuous use between 1981 and 2007, whereas the respondent produced substantial evidence of prior and continuous use of the impugned mark DIGESTO PLUS since 1980.
The court examined the evidence, including sales invoices, price lists, and approvals by regulatory authorities. It was noted that the appellant’s initial trademark registration for HASLAB’S DIGESTO, granted in 1986, had expired in 1993 and was not renewed. The appellant’s subsequent registration granted in 2023 was challenged and was not part of the trial court’s consideration. The court emphasized that the dispute had to be adjudicated on the basis of passing off rather than infringement due to the absence of a subsisting registration during the relevant period.
Crucially, the court highlighted that the word “DIGESTO” was descriptive and commonly used in the trade, supported by evidence of multiple third-party registrations and usages dating back to 1946. The appellant had earlier agreed to disclaim exclusive rights over “DIGESTO” during its 1986 registration, indicating acknowledgment of its descriptive nature. The trial court found no deceptive similarity between the two marks when considered as a whole, including their visual, phonetic, and conceptual differences, as well as distinct trade dresses.
Furthermore, the court underscored the principle that appellate courts should not interfere with discretionary orders of lower courts unless discretion is exercised arbitrarily, capriciously, perversely, or in disregard of settled legal principles. It found no such error in the trial court’s exercise of discretion.
The appeal was also dismissed on grounds of limitation, as it was filed 76 days beyond the statutory 60-day period. The appellant’s reliance on a subsequent trademark registration to justify the delay was deemed insufficient.
In conclusion, the Delhi High Court affirmed the trial court’s order, reinforcing that descriptive terms commonly used in trade cannot be monopolized by any one party and that passing off claims require clear evidence of misrepresentation and likelihood of deception. The court urged the trial court to proceed with the trial in a time-bound manner.
Bottom Line:
Appellate Court will not interfere with discretionary orders of lower courts unless discretion is exercised arbitrarily, capriciously, perversely, or in disregard of settled principles of law.
Statutory provision(s):
Trade Marks Act, 1999 Sections 29, 30; Commercial Courts Act, 2015 Section 13; Code of Civil Procedure, 1908 Order XLIII Rule 1(r), Order XXXIX Rules 1 and 2; Limitation Act, 1963 Article 5 (Commercial Cases)
