Bad Faith Adoption

The Omron Corporation is a globally prominent manufacturer of a wide range of automation components and healthcare products. It has been using the name/ trademark Omron for its products since 1959 and is regarded for goods of a superior quality.

In India, Omron’s registered trademark rights date back to 1965 and its mark has been in use since the early 1980’s.

A trademark application for ‘OMRON’ in Class 5 came up for examination in 2012 and the Omron Corporation learnt of a lapsed registration and pending application (both in Class 5) for OMRON in the name of Gujarat Terce Laboratories Ltd. (GTL) Further, the latter claimed to be using the OMRON mark since 1989 in respect of pharmaceutical and medicinal preparations.

To halt the misuse of its mark, the Omron Corporation, assisted by Remfry & Sagar, first attempted to negotiate with GTL. However, talks did not proceed favorably and this led to the Firm filing a suit for infringement and passing off against GTL on behalf of the Omron Corporation (Omron Corporation vs. Gujarat Terce Laboratories Ltd. – AO/184/2016, High Court of Gujarat).

The court of first instance decided against the Omron Corporation. It refused to grant an injunction primarily on account of GTL’s use since 1989. On appeal, the High Court set aside the first order and held that the Omron Corporation’s mark had a prior reputation and that GTL had been unable to demonstrate good faith adoption of the OMRON mark. Accordingly, injunction was granted.