Court Can't Return Finding Of Infringement Against Registered Trademark Holder Without Invalidating Its Registration: Delhi High Court

The Delhi High Court has ruled that it cannot returning a finding of infringement against the holder of a registered trade mark without invalidating its trademark registration in the first instance.

The bench of Justice C. Hari Shankar was hearing a suit for infringement of trademark, where the defendants were subsequently granted registration of the impugned trademark. The court remarked that by operation of Section 23(1) of the Trade Marks Act, 1999, the registration dated back to 29^th April 2004, i.e., the date of filing the application, which was notably before the date of filing of the trademark suit by the plaintiff. Therefore, the court said, it could not hold the defendants to be infringing the plaintiff’s trademark unless the court finds the registration of the defendants’ trademark to be invalid.

The court further remarked that the benefit of Section 124 of the Act was not available to the plaintiff since the defendants had not raised a specific defence under Section 30(2)(e), pleading registration of the impugned trade mark. The petitioner’s application under Section 124(1)(b) of the Trade Marks Act, questioning the validity of the registration granted to the defendants and seeking adjournment of the suit so that it could file rectification proceedings against the grant of registration to the defendants, was earlier dismissed by the court.

As the written statement was filed at a stage when the defendants’ mark was not yet registered and there was no further pleading made relying on the registration as a defence, the court said the exercise under Section 124 cannot be carried out. Thus, the Court said it would have to examine the validity of the defendants’ trademark in exercise of the suo motu powers conferred on it by Section 57(4), which is vested in it independent of Section 124.

“The plaintiff has already manifested its intention to question the validity of the registration of the defendants’ SUPER POSTMAN trademark. That challenge, however, was raised under Section 124, which is not applicable in the facts of the present case. Inasmuch as such a challenge has specifically been raised, and Section 29(1) and Section 30(2)(e) proscribe the Court from returning any finding of infringement without in the first instance invalidating the defendants’ registration, the Court is inclined to accept the suggestion of learned amici and to examine the validity of the defendants’ trademark in exercise of the suo motu powers conferred on it by Section 57(4), which is vested in it independent of Section 124,” the court said.

A trade mark suit was filed in 2005, seeking an injunction against the defendants from using the plaintiff’s registered trade mark POSTMAN. It was the case of the plaintiff that the defendant, by using the word mark SUPER POSTMAN with respect to the same product, i.e., edible groundnut oil, was infringing its registered mark. Prior to the filing of the suit, the defendant had filed an application dated 29^th April 2004 for registration of the impugned word mark SUPER POSTMAN. The same was allowed by the Trade Marks Registry after 19 years, on 13^th February 2023, and the mark was registered. Subsequently, the plaintiff filed an application under Section 124(1)(b) of the Trade Marks Act, questioning the validity of the registration granted to the defendants.

The court, however, ruled that since a defence under Section 30(2)(e) was not raised by the defendants, the benefit of Section 124 was not available to the plaintiff.

The court further said that it cannot shut its eyes to the fact that the defendants’ trademark is registered and that it cannot return a finding of infringement against the holder of a registered trade mark, since Sections 29 and 30(2)(e) completely proscribe the same.

The court said that any finding by the Court, that the defendants were infringing the plaintiff’s registered trademark, would be a clearly illegal order, and in teeth of Sections 29(1) and 30(2)(e) of the Trade Marks Act.

However, at the same time, the court said, it would be wholly iniquitous to deny to the plaintiff, a chance to question the validity of the registration granted in favour of the defendant. “Inasmuch as the said registration, if valid, acts as an insurmountable hurdle to the plaintiff securing any relief against infringement, the plaintiff has necessarily to be afforded an opportunity to question the validity of the said registration, if the scales of justice are to remain equipoised,” the court added.

Accordingly, the court decided to examine the validity of the defendants’ trademark by exercising the jurisdiction vested in it by Section 57(4) of the Trade Marks Act.

“In that view of the matter, list this matter on 31 October 2023 to hear both sides on the aspect of validity of the registration granted to the defendants’ SUPER POSTMAN trademark on 13 February 2023,” the court said.

Case Title: NADEEM MAJID OOMERBHOY vs SH. GAUTAM TANK AND ORS

Citation: 2023 LiveLaw (Del) 878

Counsel for the Plaintiff: Mr. Tahir Ashraf Siddiqui and Mr. Ashirvad Kr. Yadav, Advs.

Counsel for the Defendants: Mr. G.D. Bansal, Mr. Rohan Swarup, Mr. Kunal Vats and Mr. Sanyam Suri, Advs. Ms. Swathi Sukumar and Mr. Kaustubh Shakkarwar, learned amici curiae

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