Concurrent Registration Of Same Or Similar Trademark By Two Or More Persons Not Per Se Barred: Delhi High Court

The Delhi High Court has observed that if two Trade Marks are validly registered, both the registered proprietors can use the Trade Marks to the exclusivity of third parties, but cannot assert their rights against each other. Justice Asha Menon was of the view that concurrent registration of the same or similar Trade Mark by two or more persons is not per se barred under the Trademark Act, 1999. "When a challenge is raised to the registration, ordinarily till the Register is rectified and such registration is cancelled, both the proprietors would be entitled to claim a right to its use," the Court said. Analyzing various provisions of the Trademark Act, the Court summed up the following legal principles:- Two persons may have the same Trade Mark registered in their name: (i) for identical or (ii) similar or (iii) different goods.- Ordinarily if the two Trade Marks are validly registered, both the registered proprietors can use the Trade Marks to the exclusivity of third parties, but cannot assert their rights against each other.- However in certain situations, registration of the later Trade Mark may be refused registration or cancelled. These situations are: (i) when deception or confusion results, (ii) there is dishonest user, (iii) subsequent use without due cause, (iv) there is bad faith, or (v) dilution of the distinctiveness of a prior registered Trade Mark may occur.- Therefore, these factors would be relevant to decide whether the subsequent user/registered proprietor should be restrained from using his Trade Mark, even if it was registered.- Certain other aspects would also aid this determination, for example, (i) whether user is only to indicate origin of the goods, (ii) the reputation of the Trade Mark, (iii) whether it is "well- known", (iv) whether the prior user has established acquisition of distinctiveness, or (v) whether he had acquiesced in the latter‟s user of the same Trade Mark and if so, to what effect.The Court was dealing with an application filed under Order XXXIX Rules 1 & 2 of Code of Civil Procedure, 1908 filed by the plaintiff along with the suit for permanent injunction, restraining infringement of trade mark, passing off, dilution and unfair competition. The plaintiff was a company claiming to be a leading manufacturer of consumer electronic items, such as, smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head-mounted displays, etc. The plaintiff was initially incorporated in the year 1997 as "High Tech Computer Corporation" but gained popularity quickly as "HTC" and was known as such since 1998. The plaintiff had registration in more than 90 jurisdictions across the world. The defendant No.1, L V Degao was a Chinese individual and owner of the defendants No.2 to 4 Companies, which were manufacturers of electric hair trimmers, hair clippers and hair dryers bearing identical infringing Trade Mark HTC in China and supplying the same to the other defendants in India. The defendants were also selling their products not only through the defendants No.5 to 9, but also through Amazon India website.The Court noted that before the filing of the suit, an application for rectification or cancellation was already filed by the plaintiff on 16th March, 2020, which was pending. Therefore, the Court considered as to whether the plaintiff had disclosed a case for an interlocutory order, namely, an injunction against the defendants restraining them from the use of the Trade Mark HTC. The Court noted that since both the Trade Marks were registered in the matter, all facts would have to be considered holistically to determine whether or not the plaintiff was entitled to interim protection."Before considering the cited case law, it may be useful to refer to the provisions of law. The rights conferred under Section 28 of the T.M. Act to the registered proprietor of a Trade Mark upon its registration, namely, the exclusive right to use it in relation to the goods and services in respect of which the Trade Mark is registered, is limited where there are two or more such registered proprietors, as they cannot claim exclusive use against each other, but have those rights against other persons," the Court said. The Court was of the opinion that since sec. 124 of the Act deals with a situation where the validity of the registration of the trade mark is being questioned and sec. 124(5) empowers the court to pass interim injunction orders, even when there are two registered Trade Marks involved and the plaintiff seeks protection against the user of a similar or identical trade mark, the court can consider not just the question of passing off, but also of infringement. "That is why, where no rectification application has been filed, the civil court can determine the tenability of the plea of invalid registration. In other words, the court can consider the existence of a prima facie case on the same basis, to decide whether or not to grant interim orders of injunction,...

Concurrent Registration Of Same Or Similar Trademark By Two Or More Persons Not Per Se Barred: Delhi High Court

Nupur Thapliyal

Both validly registered proprietors can use Trademarks to exclusivity of third parties, can't assert rights against each other.

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