AMERICAN HOME PRODUCTS CORPORATION versus MAC LABORATORIES PRIVATE LIMITED AND ANR.

Citation: [1985] SUPP. 3 S.C.R. 264 · Decided: 30-09-1985 · Supreme Court of India · Bench: AMARENDRA NATH SEN · Disposal: Appeal(s) allowed
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Judgment (excerpt)

A 
B 
c 
264 
AMERICAN ID1E PRODUCTS CORPORATION 
V• 
MAC LABORATORIES PRIVATE LOOTED AND ANR. 
SEPTEMBER 30, 1985 
[AMARENDRA NATH SEN AND D.P. MADON, JJ.] 
Trade Marks Act, 1940 (5 of 1940), ss.14(1) and 39(2) and 
Trade and Merchandise Marks Act, 1958 ( 43 of 1958), ss. 18, 
46(l)(a)(b) and 48 - "Trade Mark" - What is - Registration of -
Valuable right on the proprietor whether conferred - Infringement 
of rights - Remedies - What are. 
Trade Marks Act, 1940 - s.14(1) - Trade matk 'Dristan' -
Registration of. 
Trade and Merchandise Marks Act, 1958 - s.46(l)(a)(b) -
"Trade !'lark" -
Removal of from Register of Trade Marks -
Two 
conditions precedent under cl.(a) must be cumulatively satisfied 
D 
- Burden of proving applicability of s.46(l)(a)(b) -
On person 
seeking removal of trade mark - Distinction between els. (a) and 
(b) - What is - S.46(1) - Object of - Trafficking in trade mark -
What is - Ascertainment of bonafide intention to use trade mark -
Whether dependant on the facts and circumstances of each case -
Whether continuous chain of events even subsequent to the appli-
E 
cation for registration to be considered - Intention to use trade 
mark sought to be registered - Must be genuine and real at the 
date of application for registration -
Whether 
the words 
"proposed to be used by hill'" in s .18 mean "proposed to be used by 
the proprietor, his agents and servants" - Effect of sub-s.(2) of 
s.48 on sub-s. (1) of s.18 - What is. 
F 
G 
Trafficking in Trade Marks - What is. 
Interpretation of Statutes: 
Deeming provision - Full effect to be given. 
Construction leading to manifest absurdity, injustice, 
inconvenience or anomaly to be avoided. 
Precedents: Doctrine of 
H 
English decisions - Can be referred to, but applicability 
would depend upon context of Indian laws, legal procedure and 
practical realities of litigation in India. 
AMEkICAN H.P.COF.PN. v. MAC LABS. 
265 
The appellsnt-American Home Products Corporation, is a 
Corporation incorporated in the United States of America. ·0ne of 
its activities is, the manufacture and marketing of pharmaceuti-
cal products and drugs carried on through its division."Whitehall 
Laboratories". The appellant was dealing with the Ind1an Company 
-
Geoffery Manners & Co. Ltd., through its subsidiary -
Home 
Products International Ltd. Some time prior to 1956 it acquired 
40% shareholding in the Indian Company. In 1956 it introduced an 
anti-iiystamin drug in the American market under the trade'"1llllrk 
'Dristan'. It got the trade mark 'Dristan' registered as a 
distinctive trade mark in the Trade Marks Register in the United 
States and subsequently in several foreign countries. 
The appellant entered into a 
technical collaboration 
agreement with the Indian Company effective from Nov. l, 1957. 
Under this agreement the Indian Company received the formulae, 
manufacturing technology, and other assistance essential for the 
efficient manufacture in India of various products of the 
appellsnt. The appellant granted to the Indian Company; for the 
duration of the agreement an exclusive aud non-transferable 
licence to make and sell the "Licensed Products" in India under 
the nsme or marks of the appellant. The agreement inter alia 
further provided that rights of registered user will be extended 
to the Indian Company in respect of each "Licensed Product" by 
the appellant - proprietor of such trade mark. 
Pursuant to the collsboration agreement the Indian Company 
manufactured and marketed the products covered thereunder and got 
itself registered as the registered user in respect of the trade 
marks relsting to the goods of' which the appellant was the 
registered proprietor. On and from December 1957 it was decided 
that the Indian Company should introduce in the Indian market 
nine new drugs of the appellsnt including 'Dristan' tablets. On 
August 18, 1958, the appellant filed an application under s.14(1) 
of the Trade Marks Act 1940, in Form TM-I for registration :>f 
the trade mark 'Dristan' in class .5 claiming to be its proprietor 
and that the same was proposed to be used by it. The application 
wss advertised as required by the Trade Marks Rules 1942. No 
Notice of opposition to the registration of the trade mark was 
filed by any one and the trade mark 'Dristan' was registered on 
June 8, · 1959 by the Registrar of Trade Marks as trade mark 
No. 186511 in class 5. Thereafter, the Indian Company obtained a 
licence for the purchase of a machine for manu
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