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Defense of Section 28 of Trademarks Act 1999 when parties have registration in Different Class

This article analyzes the legal intricacies of Section 28 of the Trademarks Act, 1999, particularly when parties hold trademark registrations in different classes. The focal point is a first appeal case where the appellant-plaintiff, Kutbuddin, contested an order favoring the defendant-respondent, Zakir Hussain. The case delves into the interpretation of Sections 28(3), 29, and 30(2)(e) of the Act, evaluating the exclusive rights conferred by trademark registration in distinct classes and their implications on infringement and passing off claims.

The appellant-plaintiff, Kutbuddin, holds registered trademarks "UPKAR Spices" (Registration No.1034169) and "ZK (label)" (Registration No.481894) under Class 30 for spices. The defendant-respondent, Zakir Hussain, registered the trademark "ZK" with "Upkar Spices" under Class 35 for services (Registration No.2276741). The plaintiff alleged that the defendant's use of the trademarks infringed upon their rights, prompting a suit for permanent injunction against the defendant. During the suit, the defendant filed an application under Sections 28(3), 29, and 30(2)(e) of the Trademarks Act, which was allowed by the Additional District Judge, leading to the dismissal of both the suit and the counterclaim.

The High Court, upon appeal, reversed the lower court's decision, emphasizing the distinct nature of trademark classes. The court noted that the appellant held valid registrations under Class 30 (goods), while the respondent's registration was under Class 35 (services). This distinction was critical in the court's analysis of the legal rights conferred by the Trademarks Act.

Section 28 of the Trademarks Act, 1999:
Sub-section (1):
Grants the registered proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered.

Sub-section (3):
Addresses situations where multiple proprietors hold registrations for identical or similar trademarks within the same class.

The High Court underscored that Sub-section (1) of Section 28 delineates the rights based on the specific class of registration, thereby preventing overlap between "goods" and "services." Consequently, Sub-section (3) must be interpreted in harmony with Sub-section (1), reinforcing the principle that trademarks in different classes operate independently.

Sections 29 and 30(2)(e):
Section 29:

  • Defines infringement, including unauthorized use that causes confusion regarding the origin of goods or services.
  • Section 30(2)(e): Provides defenses against claims of infringement, particularly if the use is in accordance with honest practices in industrial or commercial matters.

The High Court's ratio decidendi hinged on the interpretation of the scope of exclusive rights under Section 28(1). By acknowledging that trademarks in different classes do not infringe upon each other's exclusive rights, the court effectively narrowed the application of Section 28(3) to scenarios within the same class. This interpretation aligns with the legislative intent to segregate the protection of trademarks for goods from those for services, thereby reducing potential conflicts.

Concluding Note:
The High Court's decision in favor of the appellant-plaintiff, Kutbuddin, reinforces the doctrine that trademark rights are class-specific under the Trademarks Act, 1999. This case sets a significant precedent by clarifying that the registration of a trademark in one class (goods or services) does not impinge upon registrations in a different class, provided there is no direct overlap or confusion.

Case Title: Kutbuddin Kanorwala Vs Zakir Hussain Kanorwala
Order Date: 23.05.2024
Case No. S.B. Civil First Appeal No. 404/2022
Neutral Citation:2024:RJ-JD:21585
Name of Court: Rajasthan High Court
Name of Hon'ble Judge: Vinit Kumar Mathur. H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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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