Back
IN THE HIGH COURT OF JUDICATURE AT MADRAS
HON’BLE MR. JUSTICE ABDUL QUDDHOSE, J.
VARAMM Healthcare Private Limited – Appellant
Versus
MGM Healthcare Private Limited – Respondent
Application Nos. 2028, 2029 of 2023, C.S. (Comm. Div.) No. 2 of 2023
Decided On : 19-02-2024
TRADEMARKS - INVALIDITY OF TRADEMARK REGISTRATION - Trademarks Act, Section 124 - The court interpreted Section 124 of the Trademarks Act, which allows a defendant to raise a plea regarding the invalidity of a trademark registration either in a written statement or in a counter affidavit. The court emphasized that a narrow interpretation of 'plea' would undermine the statutory rights of the defendant to seek rectification of the trademark. The court concluded that the defendant's counter affidavit sufficed to satisfy the requirements of Section 124, allowing the case to proceed for rectification proceedings.
Fact of the Case:
The defendant filed a counter affidavit in response to the plaintiff's interim injunction applications, claiming that the plaintiff's trademark 'VARAM' was invalid. The plaintiff argued that the defendant needed to raise this plea in a written statement, which the defendant could not do as the statutory period for filing had expired.
Finding of the Court:
The court found that the defendant's plea regarding the invalidity of the trademark, raised in the counter affidavit, was sufficient to satisfy the requirements of Section 124 of the Trademarks Act. The court dismissed the plaintiff's argument that the plea must be in a written statement, allowing the defendant to seek rectification of the trademark.
Issues: Whether a plea regarding the invalidity of a trademark registration must be raised in a written statement to satisfy Section 124 of the Trademarks Act.
Ratio Decidendi: The court held that the term 'plea' in Section 124 is not limited to written statements and can be raised in other forms, such as a counter affidavit. A narrow interpretation would defeat the statutory rights of the defendant to seek rectification of the trademark.
Final Decision: The court allowed the applications filed under Section 124 of the Trademarks Act, framing a preliminary issue regarding the validity of the plaintiff's trademark registration and adjourning the case for three months to enable the defendant to apply for rectification.
ORDER :
1. The primary issue that arises for consideration in these applications filed under Section 124 of the Trademarks Act is whether to satisfy the requirement of Section 124 of the Trademarks Act, a plea should necessarily be taken in the written statement that the registration of the plaintiff’s trademark 'VARAM' is invalid or it would suffice if such a plea was taken by the defendant in the counter affidavit filed in the Interlocutory Applications filed by the plaintiff seeking interim injunction.
2. In order to understand the issue on hand better, Section 124 of the Trademarks Act is extracted hereunder:
(1) Where in any suit for infringement of a trade mark:
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid.
(b) the defendant raises a defence under clause (e) of subsection (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall:
(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the [High Court], stay the suit pending the final disposal of such proceedings.
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the [High Court] for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of subsection (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.”
3. In the case on hand, the applicant's/defendant's right to file the written statement has been forfeited as the maximum statutory period of 120 days for filing the same has got expired. However, in the Interlocutory Applications filed by the plaintiff seeking for interim injunction to restrain the defendants from using the plaintiff's trademark 'VARAM', a counter affidavit was filed by the defendant in those applications and in the said counter affidavit, a specific plea was taken by the defendant that the registration of the plaintiff's trademark 'VARAM' is invalid. The relevant paragraph, where such a specific plea was taken by the defendant from the counter affidavit filed in the interim injunction applications, is re-produced hereunder:
18. It is submitted that the plaintiff had applied and received registration of defendant even after knowing that defendant is the prior user of the said tradem
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 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 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 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.
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 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 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.
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 requirement of pre-institution mediation under Section 12-A of the Commercial Courts Act, 2015 is mandatory unless urgent interim relief is demonstrated, which must be assessed from the plaintiff....
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
