Dr. Mohan Dewan and Adv. Bikash Ghorai
In a suit for infringement the issue of validity of the registration of a trademark can be raised by the Plaintiff or the Defendant or both under the following conditions. Firstly, when the Defendant in suit for infringement raises a plea that the registration of the Plaintiff’s trademark is invalid. Secondly, when the Plaintiff pleads the invalidity of registration of the Defendant's trademark if the Defendant raises a defence that its mark is registered (under clause (e) of sub-section (2) of section 30 the Trade Marks Act, 1999).
If the court is satisfied that the plea regarding the invalidity of the registration is prima facie tenable, it may draft an issue regarding the same and adjourn the case for a period of three months from the date of framing of issues in order to enable the concerned parties to apply to the Intellectual Property Appellate Board (“IPAB”) for rectification of the Register.
If the parties concerned file the rectification petition for cancellation of trademark before the IPAB within the stipulated time then the trial of the suit shall be stayed by the court until the final disposal of the rectification proceedings. But if the party concerned fails to file rectification within the stipulated time, then the issue as to the validity of the registration of the trademark shall be deemed to have been abandoned and the court will proceed with the suit with respect to the other issues in the case. However, the trial court is not precluded from making any interlocutory order such as granting an injunction, directing accounts to be kept, appointing a receiver or attaching any property during the stay of the suit.
TM Registration is not conclusive, only Prima Facie
The Bombay High Court observed that Section 31 of Trade Marks Act, 1999 uses the term 'prima facie' which, when plainly read, means registration will be a prima facie evidence. Section 28 of the Act uses the term 'if valid' while describing a registered trademark. If the registration was to be 'conclusive' evidence of validity of the mark, it was not necessary to introduce the terms 'if valid' and 'prima facie'. In a series of decisions, the High Courts of Delhi, Madras, Andhra Pradesh and Gujrat have given a plain meaning to these terms to conclude that registration will be a prima facie evidence of validity of the trademark and not a conclusive evidence. The Division Bench of the Delhi High Court in Marico Limited v. Agro Tech Foods Limited 1has also held that as per Section 31 of the Act, registration is only a prima facie evidence of the validity of the registration, it is open to the Court to go into the question of tentative validity of the registration while considering the application for grant of injunction. Of course, the onus lies on the person who challenges the validity of the mark, to establish that the registration of trademark in favour of the proprietor thereof is prima facie or tentatively not valid. It was finally held that, “In cases where the registration of trademark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. It is, therefore, open to the Court to go into the question of validity of registration of plaintiff's trade mark for this limited purpose, to arrive at prima facie finding.”In Country Inn Private Limited vs Country Inns and Suites by Carlson, Inc. & Anr. 2, the Delhi High Court dealt with the question as to whether the defendant has a right to seek permission of the Court to approach IPAB for rectification/cancellation proceedings of the registered trademark of the plaintiff, even though trial in the suit has commenced and issues have been framed around seven years prior to filing the rectification proceedings before the IPAB by the defendant. The Court relied upon the Supreme Court in Patel Field Marshal Agencies & Anr. Vs. P.M. Diesels Ltd. & Ors.3 ,wherein it was observed, in case no application with respect to invalidity of the registration of the plaintiff's trademark is filed at an appropriate stage by the defendant, then the suit will proceed with respect to other issues which arise therein. Thus, the Court observed that the defendant has abandoned its claim for filing the rectification/cancellation proceedings before the IPAB with respect to the registered trademark of the plaintiff COUNTRY INN inasmuch as the rectification proceedings have been filed after commencement of trial. Therefore, it was held by the Delhi High Court that claim for cancellation of the registered trademark of the plaintiff is deemed to have abandoned by defendant.
Whether a suit for infringement lies against a registered proprietor?
The Delhi High Court in Dabur India Ltd. Vs. Alka Ayurvedic Pvt.4 observed that if the defendant’s trademark registration is pleaded to be invalid by the plaintiff, then, subject to the determination of such invalidity by the Registrar of Trade Marks or by the IPAB, a suit for infringement can be filed. This is because registration of the mark of defendant vide Section 31(1) of the Trade Marks Act is only a prima facie evidence of the validity thereof and the plaintiff has a right to apply for cancellation. If the registration is invalid, it would be invalid ab initio, and the plaintiff who pleads so cannot be deprived of suing for infringement. It is however axiomatic that if a plaintiff fails in establishing invalidity of the defendant’s trademark before the Registrar of Trade Marks or the IPAB, as the case may be, his suit for infringement cannot be maintained. Thus, registration per se is not a bar to the institution of a suit for infringement, though it may be a bar if no steps are taken for cancellation of the registration or such steps if taken, fail.
In Clinique Laboratories LLC & Anr. v. Gufic Limited & Anr.5 the Court observed that “registration is only prima facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) and even Section 28 (1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, gives to the registered proprietor" exclusive right to use the trademark. Therefore, the Hon’ble Court held that Section 31 read with the scheme of Section 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor; (B) that upon the defendant taking the plea of that he has a trademark registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings; and (C) the court is empowered in such cases to pass any interlocutory order. The court while passing interlocutory orders will necessarily have to prima facie adjudicate the validity of the two competing registrations. The legislature under Section 124 (5) has thus empowered the court under Section 124 (5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof. Though in view of Section 31, the test would be much stricter.”
The single judge of Delhi High Court in Abbott Healthcare Pvt. Ltd Vs. Raj Kumar Prasad & Anr.6held that a suit for infringement of a registered trademark is maintainable against another registered proprietor of identical or similar trademark7 . The Division Bench, upon appeal, agreed with the view of the Single Judge Bench.
Whether an opportunity to challenge invalidity of trademark can be availed due to weak pleadings
An opportunity for seeking invalidity of registration of the defendant’s mark ought not to suffer due to poor pleadings. In a recent case at the Delhi High Court: Arun Chopra Vs. Kaka-Ka Dhaba Pvt. Ltd. and Ors.8 , the Court observed that, the pleadings in a case must be analysed to come to a conclusion as to whether they are sufficient to support a plea of invalidity and whether any such plea is prima facie tenable. The Court also observed that although there is no express plea with regard to the invalidity of the mark or the entry having been made in the register without having sufficient cause, the enquiry for the present purposes must be based on a holistic and meaningful reading of the pleadings rather than an insistence on a formulistic recital of a particular plea. This is particularly important because a finding against the party claiming cancellation of a registered trademark (in this case, the plaintiff) would render the plea abandoned for all time.
In conclusion, the grant of registration of trademark is only a prima facie proof of validity and the court has power to examine the question of validity of registration of mark in an infringement suit. Once the court arrives at conclusion that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raises an issue regarding validity of the registered trademark and adjourns the case for a period of three months from the dated of framing of issue, it gives an opportunity to the concerned party to apply to the Appellate Board for rectification of the Register. If the party concern fails to do so, then the claim for invalidity of registered trademark deemed to be abandoned.
1(2010) (43) PTC 39 (Del)
2CS(COMM) No. 902/2016
32018 (73) PTC 15
42015 (61) PTC 304 (Del)
52009(41) PTC 41(Del)
6MANU/DE/1000/2014
7Clinique Laboratories LLC and Anr. vs. Gufic Limited and Anr., 2009(41) PTC 41(Del) and Rajnish Aggarwal & Ors. vs. M/s.Anantam, 2010(43) PTC 442(Del).
82019 (80) PTC 540 (Del)
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