The Case of Identical Trademarks

Bombay High Court: Dismissal of Trademark Suit for 'Miraculan' on Grounds of Limitation and Lack of Proprietary Rights

The High Court of Bombay recently decided a significant commercial IP matter in the case of Sonya Daylynn Pinto (legal heir of Dr. Palakavayalil Joseph Thomas) vs. Corteva Crop India Pvt. Ltd. & Anr. (Commercial IP Suit No. 1 of 2004). The primary issue was whether the plaintiff had any legal right or entitlement to the use of the trademark “Miraculan” and whether the assignment of the trademark to defendant No.1 was valid.

The dispute stemmed from a 1985 Memorandum of Understanding (MOU) entered into between the original plaintiff and defendant No.2, under which the defendant was permitted to register and market the plant growth stimulant “Miraculan” developed by the plaintiff. Subsequently, in 1996, the trademark was assigned to defendant No.1. The plaintiff claimed breach of the MOU and sought multiple reliefs including de-registration of the trademark, royalty compensation, and damages amounting to ₹36.36 crores.

The High Court dismissed the suit, holding that the plaintiff failed to establish any legal proprietary right over the trademark “Miraculan.” The Court found that the mark was used by either M/s. Kay Laboratories or M/s. Kay Laboratories Pvt. Ltd., both of which were not parties to the present suit. It further held that defendant No.1, being the registered proprietor, was entitled to exclusive use under the Trademarks Act, 1999. Additionally, the suit was found to be barred by limitation, as the cause of action arose between 1995–1999 and the suit was filed only in 2004.

Abhay Nevagi & Associates, appearing on behalf of Defendant No.1, played a pivotal role in securing this favourable outcome. Ably led by Dr. Veerendra Tulzapurkar, Senior Advocate, and supported by Mr. Sandesh Shukla, Mr. Amit Singh, Advocate Anasama Sayyed, Mr. Tanuj Kushare, and Mr. Bhushan Bhadgale, the legal team presented a robust defence on all legal and factual issues. Through effective coordination and strategic submissions, the team successfully demonstrated the absence of any privity of contract with Defendant No.1 and established that no obligations under the MOU extended to it. As a result, the Court ruled in favour of Defendant No.1, rejecting the plaintiff’s claim for ₹36.36 crores and all other reliefs.

This update is intended for informational purposes only and should not be construed as legal advice. For specific situations, please seek expert counsel.