The Madras High Court has reaffirmed that a prior registered trademark retains legal protection even when challenged on grounds of generic usage, provided no valid challenge to its registration has been mounted. The judgment also sets a critical precedent on the admissibility of electronic evidence under the Indian Evidence Act.
Background & Facts
The Dispute
The petitioner, M/s. J.R.K’s Research and Pharmaceuticals Pvt. Ltd., developed a Siddha medicinal oil for psoriasis treatment under the brand name "777 Oil" in 1992, prior to its formal registration in 2001 under Trade Mark No. 1061418 in Class 5. The respondent, M/s. Sanjeevi Pharma, adopted and registered a similar mark, "SANJEEVI 777 OIL", in 2003 under Trade Mark No. 1167605. The petitioner challenged the respondent’s registration before the Intellectual Property Appellate Board (IPAB), which in 2011 ordered the removal of the respondent’s mark due to lack of bona fide use and failure to produce required drug licensing documents under the Drugs and Cosmetics Act, 1940. The respondent’s subsequent writ petition challenging the IPAB order was dismissed in 2011, and no further appeal was filed, rendering the rectification order final.
Procedural History
- 1992: Petitioner began using "777 Oil" in commerce
- 2001: Petitioner registered "777 Oil" under TM No. 1061418
- 2003: Respondent registered "SANJEEVI 777 OIL" under TM No. 1167605
- 2011: IPAB ordered rectification and removal of respondent’s mark
- 2011: Madras HC dismissed respondent’s writ petition (W.P. No. 20195 of 2011)
- 2008: Petitioner filed civil suit (C.S. No. 651 of 2008) seeking permanent injunction
- 2023: Single Judge dismissed suit, holding both marks were non-bona fide and "777 Oil" was generic
- 2026: Present appeal filed before Division Bench
The Parties' Positions
- Petitioner: Argued exclusive prior use and valid registration of "777 Oil"; respondent’s mark was deceptively similar and already rectified
- Respondent: Claimed independent use of "777" since 1993 based on seven-day preparation process; alleged "777 Oil" was publici juris; relied on email (Ex.D1) to show petitioner abandoned original mark
Relief Sought
The petitioner sought a permanent injunction against the respondent’s use of "SANJEEVI 777 OIL" or any deceptively similar mark, damages for profits earned, and destruction of infringing stock.
The Legal Issue
The central question was whether a prior registered trademark, whose registration remains unchallenged, can be denied protection on the ground that its component "777" is generic or publici juris, and whether an unproved electronic record can sustain a finding of abandonment.
Arguments Presented
For the Appellant
The petitioner relied on Bajaj Auto Ltd. v. TVS Motor Co. Ltd. to argue that registration confers statutory rights enforceable against infringers. It contended that the respondent’s mark had already been lawfully rectified by IPAB and affirmed by this Court, making its continued use unlawful. The petitioner emphasized that the NRDC license agreements pertained only to manufacturing know-how, not to the trademark itself, and that no party - including NRDC or CCRAS - had ever challenged the validity of the "777 Oil" registration. It further argued that the email (Ex.D1) was inadmissible under Section 65B of the Indian Evidence Act, 1872, as no certificate was produced.
For the Respondent
The respondent contended that "777" was a descriptive term derived from the seven-day preparation process, and thus fell into the public domain. It cited Hindustan Unilever Ltd. v. Reckitt Benckiser Ltd. to argue that similarity must be assessed as a whole, and that its mark "SANJEEVI 777 OIL" was visually and phonetically distinct. It relied on Ex.D1 to suggest the petitioner had abandoned "777 Oil" in favor of "Dr. JRK’s 777 Oil" and claimed widespread use of "777" by other manufacturers, though no documentary proof was submitted.
The Court's Analysis
The Division Bench conducted a rigorous analysis of trademark law, statutory rights, and evidentiary standards. It held that the mere fact that a term may be descriptive or numerically significant does not render it generic unless proven to be common to the trade. The Court emphasized that the burden of proving publici juris status lies squarely on the defendant, and the respondent failed to produce any evidence of other manufacturers using "777 Oil" in the Siddha pharmaceutical market.
"The respondent has not adduced any material to show that the expression '777 Oil' has become a common term in the trade or that it is used by others in the same field. The absence of such evidence is fatal to the defence of genericness."
The Court further held that the respondent’s registration had been lawfully rectified and its removal from the register was final. The respondent could not, therefore, claim any legitimate right to use the mark. The Court also scrutinized the reliance on Ex.D1, the email communication, and found it inadmissible under Section 65B of the Indian Evidence Act. The absence of a certificate under Section 65B(4), coupled with non-compliance with Sections 66 and 67A, rendered the document legally worthless. The Single Judge’s reliance on this unproved electronic record to infer abandonment was therefore perverse.
The Court clarified that the petitioner’s adoption of a modified mark, "Dr. JRK’s 777 Oil", registered in 2017, did not constitute abandonment of the original mark. The addition of a prefix for branding purposes is a common commercial practice and does not negate prior rights. The Court also noted that the respondent had never challenged the validity of the petitioner’s registration, and no third party had intervened to contest it.
The Verdict
The petitioner won. The Madras High Court held that the prior registered trademark "777 Oil" remains valid and enforceable, and the respondent’s use of a deceptively similar mark after its rectification is unlawful. The Court set aside the impugned judgment and granted a permanent injunction, damages, and destruction of infringing stock.
What This Means For Similar Cases
Registered Trademarks Cannot Be Overturned on Generic Grounds Without Proof
- Practitioners must now insist that defendants prove publici juris status with concrete evidence - oral testimony or unsubstantiated claims are insufficient
- A registered mark retains its statutory protection unless formally challenged and cancelled
- Genericness must be demonstrated through market usage data, not speculative arguments
Electronic Evidence Must Comply Strictly with Section 65B
- Emails, WhatsApp messages, and digital documents are inadmissible without a Section 65B certificate
- Failure to produce a certificate under Section 65B(4) renders electronic records legally void
- Practitioners must ensure certificates are obtained and filed at the earliest stage of litigation
Abandonment Requires Clear Intent, Not Just Brand Evolution
- Launching a new brand variant does not equate to abandoning an older registered mark
- Courts will examine conduct, not marketing strategy, to determine abandonment
- Use of a modified mark alongside the original mark reinforces, rather than negates, prior rights
