Trademark Squatting? Bombay HC Scraps PAXIL Registration After 20 Years of Non-Use, Grants Relief to Glaxo

New Delhi: The Bombay High Court allowed a petition filed by Glaxo Group Limited and ordered the cancellation of the trademark PAXIL registered in the name of Shreya Life Sciences, holding that the mark had not been used for nearly two decades.

The case was filed under Section 47 of the Trade Marks Act, 1999, which permits removal of a trademark from the register on the ground of non-use.

Glaxo Group Limited, a global pharmaceutical company, argued that it had been using the mark ‘PAXIL’ internationally since the early 1990s and had built a substantial reputation worldwide, including among Indian medical practitioners.

The petitioner contended that although the respondent obtained registration of the mark in India in 2005, it had never used it for any pharmaceutical product. Glaxo further stated that it only became aware of the impugned registration in June 2024 and, upon investigation, discovered complete non-use by the respondent. It emphasized that the continued presence of the mark on the register prevented it from applying for registration of its own mark in India, thereby making it a “person aggrieved.”

The petitioner also argued that the respondent had effectively “squatted” on the trademark for over 20 years and that the justification of “expansion of business” could not qualify as “special circumstances in trade,” as it was merely an internal commercial decision and not an industry-wide constraint.

On the other hand, Shreya Life Sciences Pvt. Ltd. opposed the petition, arguing that the petitioner lacked locus standi and was not a “person aggrieved” under Section 47 of the Act.

The respondent contended that the petitioner had no commercial presence, use, or registration of the mark in India and that trademark rights are strictly territorial in nature, meaning that global reputation alone does not confer enforceable rights within India. It further argued that the mark ‘PAXIL’ had a long-standing history dating back to 1973, when it was originally registered by Rallis India Ltd., and that the respondent had lawfully acquired the mark through assignment in 2001.

The respondent maintained that the trademark had been validly registered and renewed over the years and that non-use was due to business expansion strategies, which it claimed constituted “special circumstances.” It also submitted that cancellation of the mark would cause irreparable harm to its commercial interests and alleged that the petition was filed belatedly with the intent to harass.

After considering the submissions and evidence, the Court observed that it was undisputed that the respondent had not used the trademark for approximately 20 years after registration, thereby clearly satisfying the conditions for removal under Section 47.

The Court held that the explanation of “expansion of business” was a voluntary commercial decision and could not be considered “special circumstances in trade,” which must affect the trade as a whole and be beyond the control of the proprietor.

The Court emphasized that trademarks are meant to be used as identifiers of goods and services and not to be hoarded, and it found that the respondent had no bona fide intention to use the mark and had merely squatted on it.

On the issue of locus standi, the Court rejected the respondent’s argument and held that the petitioner qualified as a “person aggrieved,” as the continued registration of the impugned mark would prevent it from seeking registration of its own mark in India. The Court further clarified that proceedings under Section 47 do not require proof of goodwill or commercial presence in India and are intended to remove unused trademarks from the register.

In conclusion, the Court allowed the petition and passed the following order:

"a. The captioned Commercial Miscellaneous Petition is allowed in terms of prayer clauses 'i' and 'ii'. b. The captioned Petition is accordingly disposed of. c. There will be no order as to costs."

To view the original order, click on the link below: