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2014 Supreme(Bom) 2042

MOHIT S.SHAH, S.J.KATHAWALLA, N.M.JAMDAR
Lupin Ltd. – Appellant
Versus
Johnson & Johnson – Respondent


Advocates Appeared:
Dr. Virendra V. Tulzapurkar, Virag Tulzapurkar, Ravi Kadam, Venkatesh Dhond, Sr. Advocates with Amit Jamsandekar, Vinay G. Parelkar, Alka Parelkar, Tanvi Kalelkar, Esha Trivedi, Neha Naik i/b V.A. Associates, Rashmin Khadekar, Alankar Kirpekar, Muralidhar Khandilkar, Deepak Gogia, Gautam Panchal i/b MAG Legal, M.K. Miglani, Vinod Bhagat, Gaurav Miglani, Dhiren Karania, Purit Jain i/b G.S. Hegde, V.A. Bhagat, M.R. Nair, R.H. Gajria, Deepa Hate i/b Gajaria & Co., Advocates.

Judgement Key Points

[4000482800056] (!) [4000482800054][4000482800026][4000482800055]

Explanation

The provided references were selected as they directly address the principle of prima facie consideration at the interim stage without requiring formal proof or detailed inquiry. The process involved scanning the judgment for sections discussing interlocutory proceedings under the Trade Marks Act, 1999, particularly where the court evaluates the validity of registration. Key criteria included phrases indicating limited, provisional assessment, such as "prima facie finding," "without detailed inquiry," and "ex facie illegal or fraudulent," which align with the standard practice in interim injunction applications under Order 39 of the Code of Civil Procedure.

  • [4000482800056]: This paragraph explicitly states that at the interlocutory stage, the court avoids "detailed inquiry" or "factual inquiry" and limits itself to determining if registration is "totally illegal or fraudulent or shocks the conscience of the Court." This supports provisional review of evidence, including documents, without formal proof.
  • (!) : Describes a "very high threshold of prima facie proof" for exceptional grounds like fraud, confirming the court's ability to arrive at a "prima facie finding" on validity at interim stage, implying acceptance of documents on a preliminary basis.
  • [4000482800054]: Notes the court can consider challenges to registration via "prima facie finding" at interlocutory stage but cannot issue "final finding," reinforcing that evidence is evaluated provisionally, not through complete admissibility processes.
  • [4000482800026]: Discusses the court's role in assessing whether a plea is "prima facie tenable" or strong enough to refuse injunction without deeper probe, indicating documents can be considered preliminarily to gauge obvious invalidity.
  • [4000482800055]: Reiterates that the court records only a "prima facie finding" on validity during interim proceedings, distinguishing it from final rectification, thus permitting reliance on documents without formal proof requirements.

These paragraphs collectively establish that interim evaluation prioritizes equity and balance of convenience, allowing prima facie scrutiny of materials to prevent manifest injustice, without mandating full evidentiary formalities reserved for trial.


JUDGMENT

MOHIT S. SHAH, J.

1. This reference has been made to the Full Bench pursuant to the order dated 13 August 2012 of learned Single Judge of this Court (Coram : B.R. Gavai, J.) for considering following question of law:

“Whether the Court can go into the question of the validity of the registration of the plaintiff's trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiff's trade mark in an infringement suit?”

2. The learned Single Judge felt the need to make this reference in view of two decisions of the Division Benches of this Court, one holding that the Court can not go into the question of validity of registration of a trade mark when such defence is taken by the defendant at an interlocutory stage in a suit for infringement of registered trade mark (judgment dated 16 February 2005 in M/s. Maxheal Pharmaceuticles v/s. Shalina Laboratories Pvt. Ltd. – Appeal No.88 of 2005 in N.M.No.2663 of 2004 in suit No.2663 of 2004) and the other decision in which the Court considered the validity of registration when
























































































































































































































































































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