The Madras High Court has restored status quo in the dispute regarding the wrongful removal of Marico's trademark ‘Manjal' from the trademarks register.

The Trademarks Registry had on February 2006, ordered that the ‘Manjal' is a generic name and cannot be registered under Section 9(1) (b) of the Trademarks Act.

Pending an infringement suit filed by Marico against Divine Pharmaceuticals in 2008 before the Delhi High Court for the use of the mark ‘Ayur Manjal', Mr Siva Subramaniyan, proprietor of Divine Pharmaceuticals, filed a rectification petition for removal of Marico's trademark ‘Manjal' before the Trademarks Registry, Chennai.

Divine Pharmaceuticals, the firm owned by Mr Subramaniam, had obtained a licence to market ‘Ayur Manjal' soaps and had subsequently applied to register the name as a trademark.

The Delhi High Court restrained Divine from using the trademark or any identical or deceptively similar mark. This precipitated the seizure of Divine's goods from the market, forcing Divine to file an application for revocation of the trademark.

In reply to the said rectification petition, Marico filed its reply to safeguard its rights and also filed a petition pointing out the lack of jurisdiction of the Deputy Registrar in dealing with the rectification petition (removal of entry) pending the litigation.

But the Deputy Registrar went ahead and disposed of the rectification petition ex-parte on the first hearing itself without even granting an opportunity to Marico to present its case and passed an order on January 21, 2011 removing Marico's mark from the register.

The hearing notice issued was only for a hearing on the Interlocutory Petition and did not mention the rectification petition.

Lall Lahiri & Salhotra, Counsel for Marico, approached Madras High Court and pointed out that as per Section 125 of the Trademarks Act, 1999, the rectification petition ought to have been filed before the IPAB (Intellectual Property Appellate Board) and that the Deputy Registrar had acted beyond the scope of her jurisdiction and in complete disregard for the statutory provisions of the Act.

The Madras High Court passed an order staying the impugned order dated January 21, 2011 passed by the Deputy Registrar and issued notice to the Deputy Registrar and Divine Pharmaceuticals.

“It was a patently illegal order which has been stayed by the Madras High Court. The High Court will now have to go into the question of whether the Registrar can, during the pendency of an infringement suit between the parties, hear a rectification petition for the removal of the mark,” Ms Anuradha Salhotra, Managing Partner of Lall Lahiri & Salhotra, said.

The trademark ‘Manjal' was originally sought by Oriental Extractions, a healthcare products manufacturer based in Kerala, and published in the Trade Marks Journal in 2003.

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