Not Open For Court To Suo Motu Question Validity Of Trademark Registration If Not Disputed By Defendant: Delhi High Court

The Delhi High Court has said that it is not open for a court to suo motu question the validity of the registration of a trademark if the same is not disputed or brought in question by the defendant in a suit. Observing that Section 9 of the Trade Marks Act, 1999 does not embody any statutory interdictions at the post registration stage, a division bench of Justice Vibhu Bakhru and Justice Amit Mahajan said that if the validity of the registration of the trademark is not brought in issue, the statutory assumption that the marks are valid must be accepted. "Therefore, once the mark has been registered, it is accepted as, prima facie, valid unless an objection is raised questioning the validity of the registration and is adjudicated by the Court," the court observed.Section 9 of the Act details the absolute grounds on which registration of a trademark can be refused.The bench added that an injunction can be refused or a mark can be rectified on account of being descriptive on an objection being taken, if the owner of the trademark fails to show that the same has acquired a distinctive character as a result of its long use.The court made the observations while temporarily restraining Kurlon Limited from using the trademark 'NO TURN' or any other deceptively similar mark, till the disposal of the suit filed by Peps Industries Private Limited claiming protection of its mark 'NO TURN' in respect of mattresses, wall beds and other similar products.While Peps Industries claimed that it had been using the mark 'NO TURN' since January 2008 which was registered in February 2011, Kurlon Limited asserted that it was also using the same mark in respect of the same product since the year 2007. Peps Industries sued Kurlon by filing a suit seeking permanent injunction against it from the use of the mark NO TURN.Claiming to be a prior user of the mark, Kurlon took a defence under Section 34 of the Trade Marks Act. The said provision disentitles the proprietor or user of a registered trademark to interfere with or restrain the use of a mark which is identical with or nearly resembling it, if the said person has been continuously using the same from a date prior to its registration.Peps Industries was aggrieved by an order passed by the Single Judge which refused to grant interim injunction in its favour. The single judge had opined that while Peps Industries had been in continuous use of the mark 'NO TURN' since January, 2008, however it would still not be entitled to the relief as the mark was descriptive in nature. In appeal, the division bench set aside the impugned order observing that once the Single Judge had come to the conclusion that there was no merit in the defence raised by Kurlon that it was entitled to use the mark being a prior user in terms of Section 34, the statutory right in respect of the registered mark was liable to be protected and the interim injunction should have been granted."It is apparent from various documents on record that the consistent stand of KURLON has been that the mark 'NO TURN' is a coined term, is distinctive, and inherently unique. Therefore, the learned Single Judge has fallen in error in holding that the mark 'NO TURN' is descriptive and therefore, KURLON is not liable to be restrained from using the mark notwithstanding that it [Kurlon] has never raised any objection as to the validity of the said mark on the ground of it being descriptive," the court observed.The court also observed that even a descriptive mark can be registered and exclusivity claimed if it has acquired a distinctive character as a result of its use or is a well-known trademark, before the date of application for registration.Thus, even if a mark which is descriptive in nature can acquire distinctiveness by virtue of being in use for a long period of time, the bench added.The court however, at the interim stage, refrained from expressing any view on the question as to whether the mark 'NO TURN' was descriptive and whether its registration was valid. "It is not necessary for this Court to speculate whether PEPS could claim any exclusivity in respect of the trademark notwithstanding that the same was found to be descriptive. Since no issue that the trademark was not descriptive was raised, there was no occasion for PEPS to respond to the said defence," the court said.The division bench concluded that the interim injunction prayed for by Peps Industries on the ground of being the owner of the registered trade mark could not have been denied. It further said the single judge erred in giving a finding on an issue which was never raised in defence by Kurlon."In view of the above, the present appeal is allowed and the impugned judgment dated 16.03.2020 passed by the learned Single Judge in IA No.4871/2019 and IA No.6715/2019 in CS(COMM) No.174/2019 titled Peps Industries Private Limited v. Kurlon Limited, is set aside. KURLON is restrained from using the mark 'NO TURN' or any other trademark deceptively similar thereto, ...

Not Open For Court To Suo Motu Question Validity Of Trademark Registration If Not Disputed By Defendant: Delhi High Court

Nupur Thapliyal

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