Back
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
SUNITA AGARWAL, C.J., ANIRUDDHA P. MAYEE, J.
Microsoft Corporation & Anr. - Petitioners
Versus
Azure Knowledge Corporation Private Limited - Respondent
R/Special Civil Application No. 5927 of 2024
Decided On : 22-07-2024
Trademark - Infringement - Trade Marks Act, 1999 - Sections 124, 30(2)(e), 47, 57 - The court emphasized the need for prima facie tenability in claims of trademark invalidity, clarifying that the trial court exceeded its jurisdiction by delving into merits rather than merely assessing the validity of the defendants' claims.
Fact of the Case:
The plaintiff filed a suit for trademark infringement against the defendant, claiming exclusive rights to the trademark 'AZURE'. The defendant sought to challenge the validity of the plaintiff's trademark registration under Section 124 of the Trade Marks Act, 1999, which was rejected by the trial court.
Finding of the Court:
The court found that the trial court improperly assessed the merits of the defendants' claims regarding trademark validity instead of determining the prima facie tenability of those claims, which led to a jurisdictional error.
Issues: Whether the trial court erred in rejecting the defendants' application under Section 124 of the Trade Marks Act, 1999, by not properly assessing the prima facie tenability of the claim regarding the validity of the plaintiff's trademark registration.
Ratio Decidendi: The court held that the trial court must only assess the prima facie tenability of the defendants' claims regarding trademark invalidity and cannot delve into the merits of those claims, as such matters fall under the jurisdiction of the High Court.
Result: The court set aside the trial court's order and remitted the matter for fresh consideration on the merits of the application under Section 124 of the Trade Marks Act, 1999.
JUDGMENT :
Sunita Agarwal, C.J.
The present petition under Article 227 of the Constitution of India has been filed to assail the judgment and order dated 22nd March, 2024 passed by the Judge, Commercial Court, City Civil Court, Ahmedabad in Commercial Civil Suit No. 533 of 2021 (Ex. 137), rejecting the said application filed by the defendant under Section 124 of the Trade Marks Act, 1999 (hereinafter referred at as ‘the T.M.Act, 1999’).
2. The brief facts relevant to decide the controversy are that the Commercial Civil Suit praying for permanent injunction on the plea of infringement of the plaintiff’s trade mark ‘AZURE’ by the defendant was filed on 06.02.2020. The plaintiff claims exclusive rights in the trade mark ‘AZURE’ with respect to which the plaintiff has obtained registration on 18.06.1998 as a device mark (‘AZURE’) under Class-9 for ‘Computer Software’. On 05.04.2010, the plaintiff filed five applications for device mark ‘AZURE’ under Classes 16, 37, 38, 41 and 42, which were duly registered. Four more applications were, thereafter, filed for registration of the trade marks by the plaintiff comprised of the word ‘AZURE’. The defendants, on the other hand, filed application for registration of trade mark ‘AZURE’ by moving an application on 23.10.2008, which was published for the first time in the month of June, 2017. Against the defendants’ application seeking registration of the trade mark ‘AZURE’, the plaintiff issued notice to the defendants and the registration application is pending as on the date.
3. In the suit for infringement filed by the plaintiff on 06.02.2020, the defendants have filed their written statement on 12.03.2020. The interim injunction application was rejected by the competent Court on 14.03.2020. On 19.11.2022, the defendants have filed application seeking amendment in the written statement to add pleadings with respect to the validity of the registered trade mark of the plaintiff. The amendment application was initially rejected on 04.05.2023 by the trial court, however, on a challenge before this Court in Special Civil Application No. 9620 of 2023, on 09.08.2023, this Court set aside the order of the trial court and allowed the request of the petitioner for amendment of the written statement. The application under Section 124 of the T.M.Act, 1999 was, thereafter, filed before the trial court to frame an issue on the plea of the defendant regarding the invalidity of the registration of the plaintiff’s trade mark and adjourn the suit proceedings for a period of three months from the date of framing of the issue in order to enable the defendant to apply to the High Court for rectification of the Register of the Trade Mark.
4. This application has been rejected by the order impugned on the grounds that the defendants were aware of the fact that the plaintiff was using the trade mark ‘AZURE’ since 08.06.1998, i.e. for the last 25 years and further that on the application filed by the defendants before the Registrar of Trade Mark in the year 2017, the plaintiff has taken objection by giving notice to the defendants. The plaintiff is a prior user of the trade mark ‘AZURE’, which has been registered under Class-9, however, the defendants have not taken any dispute regarding the validity of the registration of the plaintiff's trade mark in Class-9. At the time of filling of written statement on 12.03.2020, the defendants did not raise the plea of invalidity of the registration of the trade mark of the plaintiff. After two years of the filling of the written statement and the order of rejection of the interim injunction application, the defendants have taken objection about the validity of the registration of the trade mark of the plaintiff by moving application under Section 124 of the T.M.Act, 1999, which plea is not prima facie tenable.
5. The trial court has further proceeded to record that from the documents produced by the plaintiff such as invoices etc. from the year 1997, the plea of the defendants
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 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 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....
Trademark rectification petitions require a triable issue on validity to proceed; without this, claims are not maintainable under the Trade Marks Act, 1999.
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.
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 main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectific....
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.
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
