Can’t Reject Claim Of Infringement Merely Because Defendant Could Seek Removal Of Trademark Due To ‘Non-Use’: Delhi High Court
The Delhi Excessive Court docket has made it clear {that a} registered trademark proprietor’s declare in opposition to infringement can’t be rejected merely on the bottom that the defendant might have sought removing of the mark from the trademark’s register below Part 47 of the Logos Act, 1999 on grounds of ‘non-use’.
Part 47 offers with the correct of 1 individual to use to the Registrar of Commerce Marks to have the trademark of one other individual taken off the register citing steady non-use for five years, as much as a interval of three months previous to the applying.
A division bench of Justices C. Hari Shankar and Ajay Digpaul in its 115-page judgment dominated,
“It’s, little question, open to the infringer, as it’s to everybody else, to use to the Registrar of Commerce Marks for taking off the registered commerce mark from the Commerce Mark register and, for that cause, to quote 5 years’ non-use of the registered commerce mark as a floor for in search of cancellation. As long as this isn’t completed, and the registered commerce mark stays on the register, nevertheless, infringement of the registered commerce mark is impermissible and, if infringement takes place, the correct of the proprietor of the registered commerce mark to aid in opposition to infringement is statutorily assured.”
It added,
“The Court docket can’t refuse to grant aid the place it finds infringement on the bottom that the defendant might presumably, if it so selected, institute proceedings for cancellation of the asserted mark of the plaintiff below Part 47(1). Nor can the Court docket presume the end result of such proceedings, even when they have been instituted. As long as they aren’t instituted, the registration of the asserted mark of the plaintiff needs to be accorded due respect.”
On this case, the Appellant having registered trademark ‘CONTIN’ sought to restrain the Respondent from utilizing impugned ‘FEMICONTIN’ mark or any of the CONTIN household of marks.
A Single decide had denied the aid citing Part 47, holding that the Appellant had by no means used CONTIN as a standalone mark for any product.
Stating that the only decide erred in denying aid on this floor, the division bench stated,
“Part 47 isn’t an exception both to Part 29 of the Commerce Marks Act, which defines infringement, or to Part 28(1) learn with Part 135 which entitles the proprietor of a registered commerce mark to an injunction in opposition to an infringer…Ergo, howsoever fragile the validity of a registered commerce mark could seem, as long as it stays on the register, the correct in opposition to infringement, out there below Part 28(1), stands protected.”
The Court docket additionally referred to Part 22(3)50 of the Designs Act, and Part 107(1)51 of the Patents Act which envisage that any floor, on which the asserted design/ patent of the plaintiff is weak to invalidation, might be out there as a defence in opposition to a declare of infringement.
There isn’t a such provision within the Commerce Marks Act, the Excessive Court docket pointed. It noticed,
“Inasmuch as these are cognate statutes defending infringement of mental property, it have to be presumed that the legislature, in not offering, within the Commerce Marks Act, any provision analogous to Part 22(3) of the Commerce Marks Act or Part 107(1) of the Patents Act, did so consciously. The legislative mandate needs to be revered.”
The Excessive Court docket additionally referred to Part 31(1) of the Commerce Marks Act which offers that the registration of a commerce mark would by itself be prima facie proof of its validity.
“This prima facie presumption of validity may be unseated provided that the defendant succeeds in having the commerce mark invalidated below Part 57(1) or (2)53, or Part 47, of the Commerce Marks Act. As long as this isn’t completed, the correct to aid in opposition to infringement, out there to each registered commerce mark below Part 28(1), stands preserved,” the Excessive Court docket dominated.
Look: Mr. Pravin Anand and Ms. Prachi Agarwal, Advs for Appellant; Mr. Gagan Gupta, Sr. Adv. with Mr. Saurabh Gupta, Adv. for R-1
Case title: Modi Mundipharma Pvt. Ltd v. Speciality Meditech Pvt. Ltd. & Anr.
Case no.: RFA(OS)(COMM) 8/2023
