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Examining The Validity Of Registered Trademarks In Indian Courts: Section 57(4) v/s. Section 124 Of The Trademarks Act 1999

The case at hand revolves around the dispute between the plaintiff, who holds a registered trademark for "POSTMAN" in relation to edible groundnut oil, and the defendant, who sought and obtained registration for the mark "SUPER POSTMAN" for the same category of goods. The plaintiff alleges trademark infringement by the defendant, which raises critical questions about the validity of the registered trademark.

This article delves into the legal complexities surrounding the examination of the validity of registered trademarks in India, focusing on the interplay between Section 57(4) and Section 124 of the Trademarks Act 1999.

Section 124: A Specific Protocol for Challenging Trademark Validity:
Section 124 of the Trademarks Act 1999 is a specific provision that governs the protocol for challenging the validity of a registered trademark. This section primarily applies when there is a pending suit for trademark infringement. Subsection 124(1)(b) comes into play when the defendant raises a defense under Section 30(2)(e) of the Act. If the defendant asserts such a defense, and the plaintiff subsequently pleads the invalidity of the defendant's trademark, the court is mandated by Section 124(1)(ii) to examine the tenability of the plaintiff's challenge.

Notably, the process under Section 124 initiates with the defendant raising a defense under Section 30(2)(e), which pertains to the non-registration of the trademark in question. If this defense is not raised by the defendant, the application under Section 124 is deemed not maintainable, as was the case in the present scenario.

Section 124 and Its Inapplicability in the Present Case:
In the case at hand, the defendant did not raise a defense under Section 30(2)(e) of the Trademarks Act 1999. Therefore, the plaintiff's application under Section 124 challenging the validity of the defendant's registration was deemed not maintainable by the Hon'ble Court.

Section 57(4) as an Alternative Avenue for Challenging Trademark Validity:
Despite the dismissal of the plaintiff's application under Section 124, the Hon'ble Court acknowledged its jurisdiction to adjudge the validity of the defendant's trademark under Section 57(4) of the Trademarks Act 1999. This provision grants the court suo moto powers to examine trademark validity.

Section 57(4) states: "The Registrar or the Appellate Board or the court, as the case may be, shall, while dealing with a proceeding under this Act, have the power of the civil court trying a suit, and in particular in respect of the following matters, namely... (4) that the registration of the trade mark is wrongly remaining on the register."

The Significance of Section 57(4) in Post-IPAB Era:
This observation by the Hon'ble Court assumes greater significance in the context of the abolition of the Intellectual Property Appellate Board (IPAB). Previously, IPAB held authority over trademark disputes. However, post-IPAB abolition, the jurisdiction to adjudicate trademark matters, including challenges to trademark validity, now rests with the court.

The Concluding Note:
In conclusion, the case at hand sheds light on the nuances of challenging the validity of registered trademarks under Indian trademark law. While Section 124 provides a specific protocol for such challenges, its applicability is contingent upon the defendant raising certain defenses under Section 30(2)(e). When this condition is not met, Section 124 is not maintainable.

However, Section 57(4) emerges as an alternative avenue for challenging trademark validity, allowing the court to exercise suo moto powers to examine the validity of a registered trademark, particularly in the post-IPAB era.

Case Law Discussed:
Case Title: Nadeem Majid Oomerbhoy Vs Sh.Gautam Tank

Date of Judgement:11/09/2023
Case No.CS Comm 361 of 2018
Neutral Citation No: 2023: DHC: 6555
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Harishankar, H.J.

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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