Trademark disputes often hinge on complex legal interpretations, particularly regarding the requirement of prior permission under Section 124(1)(b)(ii) of the Trade Marks Act, 1999. The case of Data Infosys Limited vs. Infosys Technologies Limited is a landmark decision by the Delhi High Court, which examined whether a party initiating rectification proceedings before the Intellectual Property Appellate Board (IPAB) required prior permission from the court where an infringement suit was pending? This case set crucial precedents on trademark rectification and the interplay between infringement suits and rectification proceedings.

• Factual Background:
  • Infosys Technologies Limited ("Infosys") filed a trademark infringement suit against Data Infosys Limited ("the defendant").
  • Infosys alleged that the defendant's use of "Data Infosys" infringed upon its registered trademarks "Infosys" and allied marks.
  • Infosys held trademark registrations under Classes 16, 9, and 7 under the Trade and Merchandise Marks Act, 1958.
  • Infosys objected to the defendant's corporate name and domain name usage, particularly www.datainfosys.net, arguing that it amounted to trademark infringement and passing off.
  • The defendant argued that Infosys was in software development, while Data Infosys was an Internet Service Provider (ISP), asserting distinct business fields.
  • During the suit, the defendant registered "Data Infosys" under Class 38 (telecommunication services), Class 9 (computer hardware), and Class 42 (computer-related services).
  • Infosys initiated rectification proceedings before the IPAB, challenging the validity of these registrations.
  • The defendant objected, arguing that prior court permission was mandatory under Section 124(1)(b)(ii) of the Trade Marks Act, 1999.
  • The Single Judge ruled that prior permission was not required. The defendant appealed, leading to a referral to the Full Bench of the Delhi High Court.
• Procedural Background:
  • Infosys filed an infringement suit seeking a permanent injunction.
  • During the suit, the defendant obtained trademark registrations for "Data Infosys."
  • Infosys filed rectification proceedings before the IPAB.
  • The defendant objected, arguing Infosys failed to obtain prior court permission.
  • The Single Judge dismissed the objection, ruling that permission was not mandatory.
  • The defendant appealed, leading to the issue being referred to a Full Bench.
• Issues Involved in the Case:
  • Whether prior court permission under Section 124(1)(b)(ii) is mandatory before filing rectification proceedings.
  • Whether failure to obtain permission renders rectification proceedings null and void.
  • Whether the trial court must stay the infringement suit if rectification proceedings are pending.
  • Whether the IPAB’s decision on rectification is binding on the civil court.
• Submissions of the Parties:
  • Defendant's Argument:
    • Prior court permission is mandatory under Section 124(1)(b)(ii).
    • Infosys’s rectification proceedings were an abuse of process and should be deemed null and void.
    • Cited precedents: Kedar Nath v. Monga Perfumery (AIR 1974 Delhi 12), AstraZeneca UK Ltd. v. Orchid Chemicals (2006 (32) PTC 733 (Del)).
  • Infosys’s Argument:
    • Section 124(1)(b)(ii) does not impose a mandatory requirement for prior permission.
    • IPAB’s jurisdiction is exclusive; the civil court cannot decide trademark validity.
    • Cited precedent: B. Mohamed Yousuff v. Prabha Singh Jaswant Singh (2008 (38) PTC 576 (Mad) (DB)).
• Judgment and Analysis:
  • The Full Bench ruled in favor of Infosys, holding that prior permission is not mandatory.
  • If rectification proceedings were pending before the suit, the court must stay the suit.
  • If rectification proceedings were initiated after the suit, the court must assess prima facie tenability before granting a stay.
  • Infosys had the right to file rectification without permission; failure to obtain it only affects the ability to seek a stay.
  • IPAB’s decision on rectification is binding on the civil court.
  • Cited precedent: Jeet Biri Manufacturing Co. v. Pravin Kumar Singhal (2011 (47) PTC 231 (IPAB)).
• Final Decision:
  • The Delhi High Court upheld the Single Judge’s ruling and dismissed the defendant's appeal.
  • Prior court permission is not mandatory for rectification proceedings under Section 124(1)(b)(ii).
  • Failure to seek permission does not nullify rectification proceedings but affects the ability to seek a stay.
• Law Settled in this Case:
  • Parties can file rectification proceedings before the IPAB without prior court permission.
  • Section 124(1)(b)(ii) governs only the stay of proceedings, not the right to initiate rectification.
  • IPAB’s decision on trademark validity is binding on the civil court.
  • Failure to obtain permission does not nullify rectification proceedings but prevents the party from seeking a stay.

Case Title: Data Infosys Limited & Ors. Vs. Infosys Technologies Limited
Date of Order: 05.02.2016
Case No.: FAO (OS) 403/2012
Neutral Citation: Not Available
Court: Delhi High Court
Coram: Hon’ble Justice S. Ravindra Bhat, Justice Vipin Sanghi, Justice Najmi Waziri

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539