Recently, the Bombay High Court heard two appeals together to rule on the same point of law, i.e., whether the Court could go into the question of validity of the registration of a trade mark at an interlocutory stage when the defendant takes up the defense of invalidity of registration of the plaintiff’s trademark in an suit of infringement.

Suit 1 – Lupin Ltd vs. Johnson and Johnson;

Plaintiff is the registered proprietor of the mark LUCYNTA which they have supposedly adopted and conceived in the year 2010. The defendant coined and adopted the mark NUCYNTA in the year 2008 and started using it on a global level. The plaintiff filed a suit for injunction against the defendant for infringement of their registered trademark LUCYNTA. At which point the defendant raised the defence of fraudulent registration of the trademark by the plaintiff and that they were the prior users of the mark; thereby making the registration of the mark LUCYNTA invalid.

Suit 2 – Shakti Bhog Foods Ltd vs. Parle Products Private Limited;

In this case, Parle Products is the registered proprietor of the mark GLUCO. The contention of the defendant is that the GLUCO being a descriptive term cannot be monopolised. However, Parle Products asserted that in a case of infringement, the Court cannot go into the question of validity of a registration as it does not have the power to do so.

Arguments: Plaintiff/Appellant

It was contended by the plaintiff that the consideration by a Civil Court of the plea of invalidity of the registration is contrary to the object of the Trade Marks Act and that that question is required to be and can be decided only by the Registrar or the IPAB who alone have the jurisdiction to do so. The arguments also involved the Counsel’s interpretation of Sections 28, 31, 124 and 125. It was contended that the presence of the words “if valid” in Section 28 of the Act does not in any manner indicate that the legislature intended that the civil Court should consider the question of validity of registration in a suit for infringement, but legislative intent is only to allow the Defendant to raise the defence of invalidity which if and only if accepted in rectification proceedings by the appropriate forum (which is not the Civil Court trying the suit in the present case and is the IPAB in general), would result in rejecting the claim of the Plaintiff for injunction and other reliefs in the infringement suit. They further dealt with the provisions of the Designs Act and the Patents Act.

Defendant/Respondent:

It was contended by the Respondents that in order for the Court to grant an injunction or not, the Court considers (a) prima facie case; (b) balance of convenience; and (c) irreparable injury/ injustice and in order to rule on the above three points, the Court has to consider defences on the invalidity of the registration of the mark whose registration is sought.

Judgement:

The Court interpreted in detail Sections 31, 57, 124, and 125 and went into the legislative history of almost all the sections of the Act. After having interpreted the Sections and based on the legislative history, the Court laid down the following;·

  • Until the enactment of the Trademarks Act 1999, the High Court could rule on both suit for infringement and on rectification proceedings;·
  • A material change has been brought by the 1999 Act where now the question validity of the registration of the plaintiff’s trade mark can be answered only by the Intellectual Property Appellate Board and not by the Civil Court or the High Court trying the suit for infringement;·
  • With respect to Section 28(1) and Section 31(1), the Court held that the implication would be that as long as a trade mark stands registered in the name of a proprietor, the said registration shall be deemed to be valid and the registered proprietor would have an exclusive right to use the said trade mark;·
  • Section 124 read with Section 125 bars the jurisdiction of the Civil Court from deciding the question of validity of the registration of the plaintiff’s trade mark;·
  • The Court relied on various precedents like that of a decision passes by the Madras High Court where the Court looked into the question whether the words in the trademark ‘Malar’ and ‘TV’ were in public domain and did not automatically grant injunction on the basis of the registration;·
  • The Court finally held that the jurisdiction of the Court is not barred for considering the plea of the Defendant at the interlocutory stage that the registration in Plaintiff’s favour is so fraudulent or is so apparently invalid that the Court should not grant an injunction in favour of the Plaintiff and a very heavy burden lies on the defendant to rebut the strong presumption that if the mark is registered, it is valid.

So in a nutshell, it was held that the Court is not barred from refusing to grant an injunction in a suit for infringement as long as the Court finds the registration of trade mark to be prima facie illegal, fraudulent or shocks the conscience of the Court and in such cases, a very high threshold of prima facie proof is required.

This article has been authored by Durga Bhatt, an IP Law practitioner.