Bombay High Court Removes 'PAXIL' Mark From Trade Marks Register Over 20 Years Of Non-Use

The Bombay High Court recently ordered the removal of the trademark 'PAXIL' from the Register of Trade Marks, holding that its proprietor, Shreya Life Sciences Private Limited, had held on to the mark without using it for nearly twenty years.

Justice Arif S. Doctor observed that internal business decisions such as “expansion of business” cannot be used as a valid excuse for not using a trademark for long periods.

“Respondent No. 1 has, after obtaining the impugned registration, simply squatted on the said trade mark and hoarded the same. It cannot be lost sight of that a trade mark by its very definition, is meant to be used as a source identifier in respect of goods and services and is thus meant to be used and not hoarded or traded. In the facts of the present case, it is clear that this is precisely what Respondent No. 1 has done," the court said.

Glaxo Group Limited had approached the court seeking cancellation of the 'PAXIL' trademark, arguing that it had not been used at all since it was registered in 2005.

The company said it discovered in 2024 that the mark had never been used, which prevented it from applying to register its own products under the same name in India.

Glaxo, part of the global GSK pharmaceutical group, said it has used the 'PAXIL' mark internationally since 1991 and holds registrations in several countries.

It argued that the continued presence of the mark on the Indian register blocked it from seeking registration, making it directly affected by the situation.

Shreya Life Sciences opposed the plea, arguing that Glaxo had no presence in India and therefore had no right to seek cancellation.

The court, however, noted that the mark had not been used for nearly twenty years after registration, clearly meeting the requirement for removal on the ground of non-use.

It also clarified that “special circumstances” must affect the trade generally and cannot be based on individual business choices. The company's explanation that it was focusing on expanding its business elsewhere was held to be a voluntary decision and not a valid reason for non-use.

On the question of who can seek cancellation, the court held that a party can do so if the continued registration of a mark affects its ability to apply for its own trademark, even if it has no prior presence in India.

The court accordingly allowed the plea and cancelled the 'PAXIL' trademark registration.