Legal communications cannot be considered threats under the Trade Marks Act; absence of real prospects for plaintiff's success leads to suit dismissal.

JUDGMENT

In a suit filed under Sections 134 & 142 of the Trade Marks Act, 1999 (the TM Act) seeking remedies in relation to the alleged threats issued by the defendant regarding the use of the trade mark ANAGANAGA by the plaintiff, the defendant has filed an application to dismiss the suit by way of a summary judgment.

2. Mr.R.Sathish Kumar, learned counsel, advanced arguments on behalf of the applicant/defendant and Mr.Ramesh Ganapathy, learned counsel, advanced arguments on behalf of the respondent/plaintiff.

3. The arguments of Mr.R.Sathish Kumar may be summarised as under:

(i) The suit is founded entirely on the notices of opposition filed by the defendant in relation to three trade mark applications of the plaintiff. Section 142 of the TM Act only applies to the threat of an action or proceeding for infringement of a registered trade mark or some other like proceedings. By lodging notices of opposition, legal proceedings are in initiated and such proceedings cannot be construed as as a threat of proceedings falling within the scope of sub-section (1) of Section 142 of the TM Act. In support of this contention, learned counsel relied on the judgment of the Delhi High Court in Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited, 2019 SCC OnLine Del 11952, particularly paragraphs 3 to 6, 15 & 16 thereof.

(ii) The plaintiff has not adduced evidence of commercial use either in this suit or in the opposition proceedings. The documents filed by the plaintiff are in the form of an invoice for designing the trade mark, brokerage fee for sourcing and securing an immovable property for the plaintiff and evidence of making payment for purchase of domain names. In the absence of evidence of commercial use, the defendant did not see any necessity to institute a suit for infringement.

(iii) The defendant has registrations of the trade mark "NAGA" in multiple classes, including Class 43, which pertains to the restaurant business. The applications filed by the plaintiff for registration relate to similar services. Therefore, the proceedings before the Registrar of Trade Marks do not constitute an abuse of process.

(iv) In view of the nature of reliefs claimed, the plaintiff has no real prospect of succeeding in the suit. Therefore, the defendant is entitled to dismissal of the suit by way of summary judgment.

4. The contentions of Mr.Ramesh Ganapathy may be summarised as under:

(i) In the notices of opposition, the defendant has threatened that the use of the mark "ANAGANAGA" by the plaintiff constitutes infringement of the defendant's registered trade mark. The defendant has also threatened to initiate proceedings under Sections 102 and 103 of the TM Act. These statements in the notices of opposition qualify as threats within the scope of Section 142(1) of the TM Act.

(ii) The expression "or otherwise" in sub-section (1) of Section 142 of the TM Act should be construed widely as embracing statements made in the notices of opposition. The judgment of the Delhi High Court in Sidharth Wheels Private Limited v. Bedrock Limited and another, 1987 SCC OnLine Del 365 (Sidharth Wheels), was relied on to contend that the expression "or otherwise" should not be construed ejusdem generis with the preceding words, i.e. circulars, advertisements.

(iii) The defendant does not carry on identical or even similar business and does not apply the mark NAGA in relation to similar goods or services. Therefore, the opposition proceedings constitutes an abuse of process.

(iv) By taking advantage of the fact that opposition proceedings under Section 21 of the TM Act may be instituted by “any person”, the defendant has filed proceedings althoug