The court established that a defendant can challenge the validity of a trademark registration under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, based on a low threshold prima facie case.

ORDER :

1. The defendant herein is pressing for framing of issue as regards validity of registration of trademark of the plaintiff ‘STIMULIV’ as a word mark and also as a label mark, on the basis of pleadings incorporated in the written statement, particularly in paragraphs 18 and 41 thereof. According to the defendant, the said pleadings are sufficient to meet the statutory requirement under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 (Trade Marks Act) as regards prima facie tenability of the registration of the plaintiff’s trademarks.

2. It is a matter of record that, at the behest of the plaintiff, by an order dated 30.04.2024, this Court (Coram : Firdosh P. Pooniwalla, J.) has already framed an issue as regards the validity of registration of the defendant’s trademark ‘STIMULET’, on the touchstone of the requirement of prima facie tenability under Section 124(1)(b)(ii) of the Trade Marks Act. It is obvious that the rival trademarks i.e. ‘STIMULIV’ of the plaintiff and ‘STIMULET’ of the defendant are both registered trademarks. Since the framing of such an issue has been vehemently opposed on behalf of the plaintiff, this Court is required to consider the rival submissions in some detail.

3. Before proceeding to consider the rival submissions, it would be appropriate to very briefly state the chronology of events. The plaintiff filed the present suit alleging that the defendant is infringing upon the registered trademark / label mark ‘STIMULIV’ of the plaintiff by using the trademark ‘STIMULET’. It is a matter of record that in an application filed for grant of interim reliefs, a learned Single Judge of this Court by an order dated 01.03.2021 had allowed the interim application, thereby restraining the defendant from using its registered trademark ‘STIMULET’ during the pendency of the suit. The said order was challenged by way of an appeal before the Division Bench of this Court. By an order dated 20.01.2023, the Division Bench of this Court allowed the appeal and set aside the order of the learned Single Judge. It is an admitted position that the said order of the Division Bench, on a challenge raised before the Supreme Court on behalf of the plaintiff, was confirmed as the aforesaid challenge was rejected. Therefore, as on today, there is no interim relief in favour of the plaintiff and the suit is pending for further consideration.

4. Mr. Hiren Kamod, learned counsel appearing for the defendant submitted that the contents of the written statement, particularly in paragraphs 18 and 41, provide sufficient pleadings on record for this Court to reach a conclusion that a serious challenge is raised to the very validity of registration of the trademark of the plaintiff i.e. STIMULIV as a word mark as also a label mark. It is submitted that such pleadings, in paragraphs 18 and 41 of the written statement, satisfy the requirement of Section 124(1)(b)(ii) of the Trade Marks Act, for this Court to frame the issue regarding validity of registration of the trademarks of the plaintiff. It is submitted that the test contemplated under Section 124(1) (b)(ii) of the Trade Marks Act contemplates two steps; firstly, that a specific pleading must be on record challenging the validity of registration of trade mark of the other party and secondly, that arguable grounds in support of such a challenge are urged, which satisfy the Court that such a challenge is prima facie tenable.

5. It was further submitted that the scope of jurisdiction of the Court under Section 124 of the Trade Marks Act has been discussed in detail in the judgement of the Supreme Court in the case of Patel Field Marshal Agencies and others Vs. P. M. Diesels Limited and others, (2018) 2 SCC 112 and the position of law clarified therein has been followed consistently in judgements of various High Courts, including this Court. In that context, the learned counsel for the defendant relied upon judgement of the Delhi High Court in the case of Pepsico Inc. and another Vs. Par