Biocon India Limited (Biocon) is a company established in 1978 engaged in the field of biotechnology. Biocon owns various process patents and technologies in its sphere of activity in India as well as abroad. In the year 1999, Biocon applied for the registration of word mark ‘BIOCON’ under class 1, 3, 5 and 29. This was further updated to classes 1,3,5,10,16 and 29 in 2003. Biocon has spent enormous amounts of money towards popularizing its mark ‘BIOCON’ and is also represented on the worldwide web. The reputation and goodwill enjoyed by Biocon is evident from the fact that its turnover for the year 2002-2003 was to the tune of Rs. 286 Crores.
In July, 2002, Biocon came across a company named Basarass Biocon India Pvt., Ltd (Basarass) incorporated in Chennai, which was using a mark and corporate name deceptively similar to that of Biocon. Consequently, Biocon issued a letter to Basarass calling upon them to desist from the use of the trademark 'Biocon' and the Registrar of Company addressing the same issue. Eventually, Biocon filed a suit against Basarass for infringement of copyright and passing off. The Madras High Court upon being satisfied that Biocon had made out a prima facie case granted interim injunction against Basarass restraining it from using the name or mark ‘Biocon’ in any of its labels, using the name or mark as part of its corporate name and infringing upon the BIocon’s copyright.
Biocon claimed that, though the mark ‘BIOCON’ was registered in 2000 however, it was using the same since 1973. Eventually, Biocon had vested right being the prior user of the mark. Since not only Basarass was incorporated in year 2000 but was not also the registered user of the mark. Hence, by using the trademark “Biocon” the Basarass had caused huge loss to Biocon.
Around June, 2007 there was no representation for Basarass and moreover no written statement was filed. Thereafter, Basarass filed for an application for condonation of delay in filling written statement. The same was condoned the delay of 1310 days in filing the written statement and the same was condoned around July 2007 upon payment of costs and thereafter, a written statement was filed.
Basarass denied the allegations through the written statement stating that, although the Biocon was using the mark since 1973 however it could not have coined the word as there were several other companies in Ireland, Ukraine, Japan and U.S.A., which had the word 'Biocon', as part of their corporate name.
In addition to it, Basarass claimed that its products were not sold or retailed across the counters but used as industrial raw material only. Basarass further claimed that its business was restricted to ‘Biocontrol of pests and plant diseases’ which had no connection whatsoever with the activities of Biocon. Basarass contended that since they were not competitors in direct sense its activities could not have not caused any loss to Biocon and sought to dismiss the suit.
After perusing the documents placed on record and having considered the submissions and contentions of both parties, the Madras High Court partly decreed the suit as follows:
- Referring to the issue of infringement of the registered trademark “Biocon” the Court held that the unauthorised use of the trademark by Basarass was likely to create confusion amongst the consumers hence, the Court granted perpetual injunction against Basarass.
- However, with regards to the question of damages, the Court denied Biocon’s prayer to sought damages stating there was no similarity in the labelling or the products of the two parties. Biocon’s products were used for human consumption while on the other hand Banaras’s products were only meant for industrial raw materials.
