2014 Supreme(Bom) 2042

High Court of Judicature at Bombay
MOHIT S. SHAH, S.J. KATHAWALLA & N.M. JAMDAR, JJ.
Lupin Ltd. & Another – Appellants
Versus
Johnson & Johnson & Another – Respondents
Notice of Motion (L) No. 2178 of 2012, Suit (L) No. 1842 of 2012 Alongwith Appeal (L) No. 674 of 2012, Notice of Motion No. 1533 of 2012, Suit No. 1171 of 2012
Decided On : 23-12-2014

Headnote:Trade Marks Act, 1999 - Sections 28, 29 and 31 Grant of interim injunction. Court, has jurisdiction to examine validity of plaintiff’s registration at interim stage. Section 31 uses the phrase ’prima facie’ which when plainly read, means registration will be a prima facie evidence. The expression ’prima facie’ is too well-settled to be expounded. To substitute the words ’prima facie’ with ’conclusive evidence’, would be rewriting the section. Section 28 uses the phrase ’if valid’. If the registration was to be the ’conclusive’, it was not necessary to introduce the phrases ’if valid’ and ’prima facie’. In series of decisions, the Delhi High Court, Madras High Court, Andhra Pradesh High Court and Gujrat High Court have given plain meaning to these phrases to come to the conclusion that registration will be a prima facie evidence of its validity and not a conclusive evidence.

       The words "if valid" in Section 28 and "prima facie evidence of title" in Section 31 support the defendant’s case that the defence of invalidity of registration of the plaintiff’s trade mark can be considered at the interlocutory stage. As per the settled legal position, a Court hearing and deciding an interlocutory application for injunction during the pendency of the suit is required to consider : (i) prima facie case; (ii) balance of convenience; and (iii) where an irreparable injury an d injustice would be caused to the plaintiff if an interim injunction is not granted.

       Trade Marks Act, 1999 - Sections 28, 29 and 31 Designs Act, 2000, Sections 19 and 22(4) Parents Act, 1970, Sections 10 and 64 Suit against infringement of trade marks. Court, entertaining suit against infringement of trademarks, has power to examine validity of plaintiff’s registration.

       Trade Marks Act, 1999 - Section 29 Grant of temporary injunction. Court, while granting temporary injunction, can examine validity of plaintiff’s registration and can record a prima facie finding. That at the interlocutory stage the Court is not required to call upon the plaintiff to prove that the registration of his trade mark is not invalid, In view the scheme of the Act that the application of the applicant for registration of the trade mark is required to be advertised with an opportunity to the world at large to submit opposition to such application and the Registrar grants opportunity to lead evidence and opportunity of hearing to the applicant as well as the opponent and thereafter decides the application and grants registration, there will be a strong presumption in favour of the plaintiff. Hence, at the interlocutory stage, the Civil Court is not to embark upon and evolve factual inquiry, but the Civil Court hearing the application for interim injunction to restrain the defendant from using the trade mark registered in the plaintiff’s name, is only permitted to consider whether the registration is totally illegal or fraudulent or shocks the conscience of the Court.

       It is not sufficient for the defendant resisting the application for interim injunction to show that the defendant has an arguable case for showing invalidity of the trade mark registered in the name of the plaintiff. Such "low threshold prima facie case" may be sufficient for the defendant to get an opportunity under Section 124(1) and (2) of the 1999 Act to get the trial of the suit stayed for the purpose of enabling the defendant to apply to the Appellate Board for rectification. Such prima facie satisfaction of the Civil Court at the lower threshold will not be sufficient to refuse interim injunction in favour of the plaintiff who has filed the suit for infringement. But if the defendant is able to show, without Civil Court being required to embark upon detailed inquiry, that the registration granted in favOur of the plaintiff is totally illegal or fraudulent or such which shocks the conscience of the Court the Civil Court will refuse to grant interim injunction.

       Trade Marks Act, 1999 - Sections 29 and 124 Grant of interim injunction. Court, at interim stage, can record only a prima facie finding as to validity of registration and not a final finding. While the registered proprietor of a trade mark would ordinarily be entitled to finding of the Civil Court in its favour that the trade mark registered in its name is prima facie valid, the jurisdiction of the Court is not barred for considering the plea of the defendant at the interlocutory stage that the registration in the plaintiff’s favour is so fraudulent or is so apparently invalid that the Court should not grant an injunction in favour of the plaintiff. Of course, a very heavy burden lies on the defendant to rebut the strong presumption in favour of the plaintiff at the interlocutory stage. The Civil Court obviously cannot give any final finding on this question as the jurisdiction to give such final finding is conferred on appellate Board in the rectification proceedings, but it is not possible to accept the plaintiff’s contention that at the interlocutory stage the jurisdiction of the Civil Court is completely barred.