S.124 Trade Marks Act: Bombay HC Frames Issue on Trademark Validity Based on 'Low Threshold Prima Facie Case' - 2025-04-08

Bombay High Court Frames Issue on Validity of ' STIMULIV ' Trade mark, Emphasizing 'Low Threshold' for Scrutiny under S.124 Trade Marks Act

Mumbai, [Insert Date - Current Date] – In a trademark infringement suit between Franco Indian Pharmaceuticals Pvt Ltd and Corona Remedies Pvt Ltd, the Bombay High Court, presided over by Justice ManishPitale , has ordered the framing of an issue concerning the validity of the plaintiff's registered trademark ‘ STIMULIV ’. This decision highlights the court's approach to Section 124 of the Trade Marks Act, 1999 , emphasizing a 'low threshold prima facie case' for challenging trademark validity at the issue framing stage.

Background: Clash of Trade marks

Franco Indian Pharmaceuticals initiated the suit against Corona Remedies, alleging infringement of their registered trademark ‘ STIMULIV ’ by Corona’s use of ‘STIMULET’. The legal battle has seen prior interim relief granted to Franco Indian by a single judge, subsequently overturned by a Division Bench and upheld by the Supreme Court, leaving no current interim restraint on Corona Remedies. Now, Corona Remedies sought to have the court frame an issue on the validity of Franco Indian ’s ‘ STIMULIV ’ trademark registrations, both as a word mark and a label mark.

Defendant's Challenge: Descriptive Nature of ‘ STIMULIV ’

Represented by Mr. Hiren Kamod , Corona Remedies argued that their written statement contained sufficient pleadings, particularly in paragraphs 18 and 41, to warrant the framing of an issue under Section 124 (1)(b)(ii) of the Trade Marks Act. They contended that these pleadings established a prima facie tenable challenge to the validity of ‘ STIMULIV ’ registration. Key arguments included:

Descriptive Mark: Corona Remedies asserted that ‘ STIMULIV ’ is descriptive of pharmaceutical preparations, especially ayurvedic preparations for liver stimulation, for which it is used.

Disclaimer Misuse: They pointed to a disclaimer on the ‘ STIMULIV ’ registration regarding descriptive elements, alleging Franco Indian was using the mark beyond the scope of this disclaimer.

Corona Remedies relied on Supreme Court precedent in Patel Field Marshal Agencies vs. P. M. Diesels Limited and Delhi High Court judgments like Pepsico Inc. vs. Parle Agro and Dharampal Satyapal Limited vs. Basant Kumar Makhija , to emphasize the 'low threshold' for prima facie tenability at this stage, not requiring a deep dive into merits.

Plaintiff's Resistance: Mutually Destructive Pleas and Rectification Petition

Represented by Mr. Amit Jamsandekar, Franco Indian vehemently opposed the issue framing. Their primary contentions were:

Premature Rectification: Corona Remedies had already filed a rectification petition before seeking issue framing, arguing this preempted the purpose of Section 124 , which is to enable rectification petitions after issue framing.

Weak Pleadings: They dismissed the descriptive argument, highlighting the 50-year history and distinctiveness of ‘ STIMULIV ’, originally registered under Part ‘A’ of the old Trade and Merchandises Act, 1958 as a highly distinctive mark. They cited Burger King Corporation vs. Ranjan Gupta (Delhi HC) to argue the challenge was frivolous and untenable.

Mutually Destructive Pleas : Franco Indian argued Corona Remedies' reliance on Sections 12, 28(3), and 30(2)(e) of the Trade Marks Act – defenses related to concurrent use and similar trademarks – contradicted their challenge to ‘ STIMULIV ’ validity, suggesting an admission of mark similarity undermining their validity challenge. They cited R. N. Gosain vs. Yashpal Dhir (SC) and Neon Laboratories Limited vs. Themis Medicare Limited (Bombay HC) on approbating and reprobating.

Court's Reasoning: 'Low Threshold' and Prima Facie Tenability

Justice Pitale , referencing Section 124 of the Trade Marks Act and the Supreme Court's interpretation in Patel Field Marshal , underscored that the section aims to "eliminate false, frivolous and untenable claims of invalidity." The court reiterated the "low threshold prima facie case" standard for issue framing, as elucidated by a Full Bench of the Bombay High Court in Lupin Limited vs. Johnson & Johnson .

> "Thus, as per the law laid down by the Full Bench of this Court in the case of Lupin Limited Vs. Johnson & Johnson (supra), the test of prima facie tenability contemplated under Section 124 (1)(b)(ii) of the Trade Marks Act is a 'low threshold prima facie case' test. It can be said to be lower than the test of prima facie case, which a plaintiff is required to satisfy while pressing for interim reliefs before the Court in the context of a rival having a registered trade mark."

The court found that Corona Remedies' pleadings, particularly paragraphs 18 and 41, did raise a "frontal and direct challenge" regarding the descriptive nature of ‘ STIMULIV ’ and thus met the 'low threshold' for prima facie tenability. The court clarified it was not ruling on the merits of the validity challenge at this stage, only its arguability.

Addressing the plaintiff's 'mutually destructive pleas' argument, the court affirmed that defendants are permitted to take inconsistent pleas and clarified that Corona Remedies' defenses under Sections 12, 28(3), and 30(2)(e) were alternative arguments, not admissions of similarity that negated their validity challenge.

Regarding the pre-emptive rectification petition, the court, citing Resilient Innovations Private Limited vs. Phonepe Private Limited (Delhi HC), dismissed the plaintiff's contention, finding it would lead to unnecessary procedural hurdles. The court opted to stay the suit and allow Corona Remedies to pursue their existing rectification petition, aligning with the principle of avoiding multiplicity of proceedings.

Decision and Way Forward

Ultimately, the Bombay High Court framed the issue:

> "Whether the registration of the trademark ' STIMULIV ' bearing registration No.297201 in Class 5 and registration of the label mark ' STIMULIV ' bearing registration No.490598 in Class 5, in the name of the plaintiff, is valid or not?"

The suit remains stayed, allowing Corona Remedies to proceed with their rectification petition. This judgment reinforces the 'low threshold' approach for issue framing under Section 124 of the Trade Marks Act and clarifies the procedural aspects concerning pre-emptive rectification petitions, offering valuable guidance for trademark litigation in India.