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DELHI HIGH COURT
NAVIN CHAWLA
Perfetti Van Melle S.P.A – Appellant
Versus
Suresh Nanik Lilaram Hingorani – Respondent
| Table of Content |
|---|
| 1. filing of trade mark infringement suit (Para 1 , 2 , 3) |
| 2. plaintiffs argue for stay on infringement suit (Para 4 , 5) |
| 3. defendants argue suit must be stayed automatically (Para 6 , 7) |
| 4. court's analysis of section 124 of trade marks act (Para 8 , 9 , 10 , 11 , 12 , 13 , 14) |
| 5. interpretation of supreme court's ruling on trade mark validity (Para 15 , 16 , 17 , 18 , 19 , 20) |
| 6. court reflects on applicability of section 124 to passing off (Para 21 , 22 , 23 , 24) |
| 7. conclusion to stay infringement but allow passing off claims (Para 27) |
JUDGMENT
Navin Chawla, J.
I.A. 10775/2018
1. The present application has been filed by the plaintiffs under Section 124 of the Trade Marks Act, 1999 (in short, `the Act') praying for the following reliefs:
"a) Allow the present application under Section 124 of the Trade Marks Act, 1999;
b) Frame the issue with respect to invalidity of registration number 482653 for the mark HARNIK CHUPA CHUP as claimed by the Plaintiff.
c) Stay the proceedings qua the case so far as it relates to infringement of trade mark in terms of section 124 of Trade Marks Act, 1999."
FACTUAL BACKGROUND
2. The present suit has been filed by the plaintiffs inter
Section 124 of the Trade Marks Act mandates automatic stay of infringement proceedings when rectification is pending, and does not apply to passing-off claims.
The court established that under Section 124 of the Trade Marks Act, 1999, a civil suit must be stayed if a rectification application regarding trademark validity is pending.
The right to cancel a trademark under Section 57 of the Trade Marks Act is independent of ongoing infringement suits and remains available for invocation regardless of related Section 124 implication....
The trial court must only record prima facie satisfaction regarding the invalidity of a trademark under Section 124 of the Trademarks Act without detailed evaluation of evidence.
The court ruled that a suit not questioning trademark validity and filed solely for injunction does not invoke stay under Section 124 of the Trade Marks Act, 1999, emphasizing mandatory issue framing....
The trial court must assess only the prima facie tenability of claims regarding trademark validity under Section 124, without delving into the merits of those claims.
The validity of registration of the trademark should be decided first in the rectification petition before the infringement action is decided, and the procedure can be tailored to meet the specific r....
A plea regarding the invalidity of a trademark registration can be raised in a counter affidavit and is not restricted to a written statement under Section 124 of the Trademarks Act.
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