When a defendant says “your registration is invalid,” can the court weigh that at the interim-injunction stage — or must it treat a registered mark as valid until a tribunal says otherwise? The Bombay High Court answered in Lupin/Shakti Bhog.
Note: The IPAB was abolished in 2021; rectification is now before the High Courts. The principle below — that the trial court can still refuse an interim injunction where a registration is prima facie fraudulent — stands.
The question
The Bombay High Court heard two appeals together on one point: can a court examine the validity of a plaintiff’s trademark registration at the interlocutory stage when the defendant, in an infringement suit, raises the defence of invalidity?
The two suits
- Lupin Ltd v. Johnson & Johnson — Lupin owned LUCYNTA (adopted 2010); the defendant coined NUCYNTA (2008) and used it globally. Sued for infringement, the defendant claimed Lupin’s registration was fraudulent and that it was the prior user — making LUCYNTA invalid.
- Shakti Bhog Foods v. Parle Products — Parle owned GLUCO; the defendant argued GLUCO is descriptive and can’t be monopolised. Parle argued a court can’t examine validity in an infringement suit.
The arguments
- Plaintiffs: a civil court weighing invalidity is contrary to the Act’s scheme — only the Registrar or IPAB can decide validity (via rectification); the words “if valid” in Section 28 don’t invite a civil court to test validity, only to let the defendant raise the defence, which succeeds only if accepted in rectification by the proper forum.
- Defendants: to decide an injunction, a court weighs prima facie case, balance of convenience, and irreparable injury — and to do that, it must consider defences on the mark’s invalidity.
The ruling
Interpreting Sections 31, 57, 124 and 125 and the Act’s legislative history, the court held:
- pre-1999, the High Court could decide both infringement and rectification;
- the 1999 Act changed this — validity of the plaintiff’s mark can be finally decided only by the IPAB, not the civil court trying the suit;
- under Sections 28(1) and 31(1), a registered mark is deemed valid, giving the proprietor exclusive rights;
- Section 124 read with 125 bars the civil court from finally deciding validity; but
- the court’s jurisdiction is not barred from considering, at the interim stage, that the registration is so fraudulent or apparently invalid that no injunction should be granted — with a very heavy burden on the defendant to rebut the strong presumption of validity.
In short: a court can refuse an interim injunction where the registration is prima facie illegal, fraudulent or shocks the conscience — but that needs a very high threshold of prima facie proof.
The takeaways
- Registration is presumed valid — the defendant carries a heavy burden.
- Final validity is for rectification (now the High Court), not the trial court.
- But interim relief can be refused where the registration is prima facie fraudulent/invalid.
- The threshold is very high — ordinary invalidity arguments won’t defeat the injunction.
Frequently asked questions
Can a civil court decide a trademark’s validity in an infringement suit? Not finally — that’s for rectification (now before the High Court). But at the interim stage, the court can refuse an injunction if the registration is prima facie fraudulent or apparently invalid.
Is a registered trademark presumed valid? Yes — under Sections 28 and 31, a registered mark is deemed valid, giving the proprietor exclusive rights, and a challenger bears a heavy burden to displace that presumption.
What threshold must a defendant meet to defeat an interim injunction on validity? A very high one — the registration must appear prima facie illegal, fraudulent or such as to shock the conscience of the court.
Which sections govern this? Sections 28, 31, 124 and 125 of the Trade Marks Act, 1999, as interpreted in Lupin v. J&J and Shakti Bhog v. Parle.
Legislation referred to
- The Trade Marks Act, 1999