Can Suit For Infringement Lie Against Proprietors Of Registered Trademark? Delhi High Court Refers Issue To Larger Bench

The Delhi High Court has referred to a larger the following questions of law in relation to trademark infringement:“(i) Whether a suit for infringement can lie against the proprietor of a registered trademark, with respect to the use of such trademark? (ii) Whether, assuming such a suit can lie, the Court can pass any interlocutory order, injuncting the use, by the defendant, of the allegedly infringing registered trademark? (iii) Assuming the Court can do so, whether such an order of injunction can be passed without, in the first instance, the proceedings going through the steps envisaged in para 19.1(viii) supra, i.e., without (a) the defendant raising a Section 30(2)(e) defence, (b) the plaintiff pleading invalidity of the defendant's trade mark in response thereto,(c) the Court being satisfied that the plea of invalidity raised by the plaintiff is tenable, (d) an issue being framed by the Court in that regard, (e) the suit being adjourned by a period of three months in order to enable the defendant to initiate rectification proceedings, (f) rectification proceedings being initiated by the defendant within the said period and (g) trial of the suit being stayed, pending the outcome of the rectification proceedings? OR Whether the mere incorporation, in the plaint, of a plea that the registration of the defendant's trade mark is invalid, is sufficient to empower the Court to injunct the defendant from using its registered trade mark on the ground of prima facie infringement, without proceeding through steps (a) to (g) above?”The reference was made after a division bench of Justices C. Hari Shankar and Ajay Digpaul disagreed with the view of a coordinate bench decision in Raj Kumar Prasad v Abbott Healthcare Pvt. Ltd. (2014).In Raj Kumar (supra) it was held that an action for infringement can lie against a registered proprietor of a trademark and, further, that an injunction against use of the mark by such registered proprietor can also be granted by a Court.In the present case however, the judges were of the view that conferring on a Court the right to grant an injunction against the use of a registered trademark would violate Section 29(1) to (4), Section 28(1), Section 28(3) and Section 30(2)(e) of the Trade Marks Act.It held, “There can be no infringement by a registered trademark. An unregistered trademark alone can infringe. Use of a registered trademark, for the goods or services in respect of which it is registered, can never be infringing in nature. Ergo, the right to “relief against infringement”, otherwise available to a registered proprietor of a trademark under Section 28(1), can never extend to relief against another registered proprietor of a trademark. An action for infringement cannot lie against a registered proprietor or a trademark.”However, given the difference in opinion, the bench deferred passing of final judgment in the appeal preferred by Abros Sports International Pvt. Ltd. seeking injunction against 'NEBROS'- a registered trademark of the respondent, stated to be deceptively similar to the appellant's shoe brand 'ABROS'.Appearance: Mr. Ranjan Narula, Mr. Shakti Priyan Nair and Mr. Parth Bajaj, Advs. for Appellant; Mr. Sanchay Mehrotra, Adv for RespondentsCase title: Abros Sports International Pvt. Ltd. v. Ashish Bansal And OrsCitation: 2025 LiveLaw (Del) 540Case no.: FAO(OS) (COMM) 140/2024Click here to read order

Can Suit For Infringement Lie Against Proprietors Of Registered Trademark? Delhi High Court Refers Issue To Larger Bench

Kapil Dhyani

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