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Validity Of Registered Trade Mark In Suit For Infringement

In a case for infringement of registered Trademark, the Trademark registration is prima facie evidence of validity. It has also been laid down by various courts that in a case for infringement of Trademark, mere production of Trademark Registration Certificate is sufficient.

If Plaintiff is able to show that the trademark of the Defendant is similar to registered Trademark of the Plaintiff , then Plaintiff is not required to show any thing more. Thus in a Suit for infringement, mere production of Trademark registration is sufficient and Plaintiff is not required to show any other evidence.

Section 31 of Trademarks Act 1999 also stipulates so. It creates prima facie presumption in favour of validity of a Registered Trademark. Section 31 of Trademarks Act 1999 is reproduced as under:

31. Registration to be prima facie evidence of validity:

  1. In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
     
  2. In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registerable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

From bare perusal of Section 31 of Trademarks Act 1999, it is apparent that in a Suit for infringement of Registered Trademark, the Court will always presume the Registered Trademark of Plaintiff to be invalid.

But what will happen if the registration of the Plaintiff prima facie appear to have been obtained by fraud. In case the dishonesty on the Part of the Plaintiff is apparent in obtaining the registration, can a defendant be estopped from challenging the validity of registered Trademark?

Filing of cancellation Petition against the registered Trademark may be another remedy available to the Defendant. But what if cancellation petition is pending for long time. Is defendant not entitled to request the Hon'ble Court to look into the validity of a fraudulent registration obtained by the Plaintiff.

This issue has been dealt with by the Hon'ble Division Bench, High Court of Delhi, while passing the Judgement dated 06.10.2022 passed in Suit bearing No. CS(COMM) 308 of 2021 titled as Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

Fact of the case was that the Plaintiff filed Suit for infringement against the infringement of registered trade mark SHAMROCK. On the other hand, the Defendant was alleging prior use of Trademark SHAMROCK in India.

Two Suits were pending before the Hon'ble High Court of Delhi. The Hon'ble High Court Delhi was dealing with Suit for infringement as well as counter suit for passing off. The Plaintiff was heavily relying upon the Trademark Registration. While the Defendant was asserting right by virtue of passing off.

The Defendant also assailed Trademark registration of the Plaintiff being dishonest registration. The Hon'ble High Court of Delhi observed that in a suit for infringement of Registered Trademark, the court can look into validity of a registered trademark, if the registration prima facie appears to be fraudulent or dishonest.

In the facts of the case, while dealing and assessing the rights and contention of parties, the Hon'ble High Court of Delhi reached the conclusion that plaintiff has filed the subject matter Trademark registration as proposed to used and actually have not put on record any document showing user of the subject matter registered Trademark.

This was the reason why the Hon'ble High Court refused to grant injunction in favour of the Plaintiff as , according to the Hon'ble Court, the subject matter Trademark registration of the Plaintiff was pima facie suspect.

After discussing the provisions of Section 27, 28 and Section 34 of the Trademarks Act 1999, the court observed that that rights of a registered proprietor are not absolute or indefeasible. Registration under the Act only gives a presumption as to the validity of a mark, which may be rebutted by claims of prior use.

On the contrary, the Defendant put on record various documents showing user of subject matter registered Trademark SHAMROCK. It is well settled proposition of law that registration of trademark does not have any effect on the prior user. Having observed so, the Hon'ble High Court of Delhi was pleased to grant injunction in favor of the Defendant in the counter suit of passing off action.

Thus it is apparent that the Hon'ble High Court of Delhi , while dealing with the Suit for infringement of Trademark, has not only looked into validity of Plaintiff's registered Trademark, but was also pleased to return the finding that the subject matter Trademark registration to be dishonest registration.

The outcome of this Judgement is that though in a suit for infringement of Trademark , the Trademark registration is prima facie evidence of validity, however in case of fraudulent or dishonest registration, the Hon'ble Court may always look into validity of registered Trademark.

Case Law Discussed:
Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.
Judgement date:06.10.2022
Suit No.CS(COMM) 308 of 2021
Name of Court: Delhi High Court
Name of Hon'ble Justice: Sanjeev Narula, H.J.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
[email protected], 9990389539

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