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Whether mere taking defense of invalidity is sufficient enough for Section 124 of Trade Marks Act 1999?

Section 124 of the Trade Marks Act 1999 deals with the grounds for rectification/cancellation of a registered trademark. One of the grounds for rectification/cancellation is that the registration was obtained by fraud, false representation, or the trademark is wrongly remaining on the register.

When the Defendant raises the Defense of invalidity , it is considered to be sufficient compliance of Section 124 of Trademarks Act 199. The Hon'ble High Court of Delhi answered this question by saying that mere taking defense of invalidity is not sufficient to invoke the provisions of Section 124 of the Act.

The Suit: The Subject matter Suit was filed by the Plaintiff against the Defendants seeking relief of permanent injunction amounting to infringement of its registered Trade Mark. Even ex parte injunction was granted against the Defendants.

The Defense of Defendant: The Defendants raised the Defense of inter alia that Plaintiff's registrations BURGER KING is liable to be cancelled.

Plaintiff's Goods: Kitchen home appliances, including "pressure cookers‟ and "gas stoves‟, both electric and non-electric, non-stick cookware, induction cook-tops, mixer grinders, chimneys etc.

The Issues before the court: Whether the Defense of Plaintiff's registered Trademark BURGER KING being invalid , is prima facie tenable.

The Judgement: The Court observed that the plea raised by the defendant with regard to the invalidity of registrations granted in favour of the plaintiff in respect of the trademark BURGER KING and other formative marks, is prima facie not tenable.

The Reasoning: While rejecting the argument of the Defendants, the Hon'ble reasoned as under:

  1. Mere raising the Defense of Registered Trademark being invalid, is not enough. The party raising such defense must establish that the registered Trade mark is prima facie invalid.
  2. The Defendant alleged that mere pleading against the registered Trade Mark being invalid, was sufficient compliance as mentioned in Section 124 of the Trade Marks Act 1999. This argument was however not found in the spirit of provision of law. As the Hon'ble Single, the prima facie tenability of invalidity of registered Trade mark , must be established by the party raising such defense.
  3. The First argument of the Defendant regarding invalidity of Plaintiff's registered Trade Mark was non use. This argument of the Defendant was primarily based on this fact that the Plaintiff has failed to put on record any document showing user of Trade mark BURGER KING in India.
  4. However the Hon'ble Single Judge rejected this argument by observing that even preparatory user was sufficient enough to reject the argument of non use.
  5. Reason for returning this observation was that, the same has not launched its BURGER KING product in India, however it was further averred by the that the plaintiff has set up a joint venture in India to establish BURGER KING restaurants in India. This amount to be preparatory use.
  6. The argument of Defendant that the subject matter Trademark being generic in nature was also considered to not available to it because of law of estoppel.
  7. In the present case, the Defendant itself have applied for seeking registration of the Trade Mark BURGER KING.
  8. Hence the Defendant can not take the Defense of Plaintiff's Trade Mark BURGER KING to be generic.
  9. Even other wise , in the fact of the case, the Hon'ble Single Judge observed that the Defendant has not put record sufficient document showing the Plaintiff's Trademark to be common to trade.
  10. Hence the argument of the Defendant , the Plaintiff's Trade mark to be common to trade, was also found not to be prima facie tenable.

It is submitted that The defense of invalidity is typically raised by an alleged infringer in a trademark infringement action. In such a case, the alleged infringer argues that the registered trademark is invalid, and therefore cannot be enforced against them.

To invoke Section 124, the party seeking rectification/cancellation must provide evidence that the registration of the trademark was obtained by fraud, false representation, or that the trademark is wrongly remaining on the register. Mere allegations or general assertions of invalidity are insufficient to trigger the provisions of Section 124.

It is apparent that the defense of invalidity is not sufficient to invoke Section 124 of the Trade Marks Act 1999. The Court must apply it's mind regarding the defense of invalidity. The Defendant must prima facie satisfy the prima facie tenability of invalidity of trademark, to the satisfaction to court. Mere pleading of invalidity is not enough. The Court must satisfy it self on the basis of grounds raised and documents put on record by the Defendant.

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

The Case Law Discussed:
Case Title: Burger King Corporation Vs Ranjan Gupta
Judgment date: 06.03.2023
Case No: CS Comm 229 of 2018
Neutral Citation No. 2023/DHC/001661
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Amit Bansal

Written By: Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
Mob:9990389539, Email: [email protected]

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