01 January 0001

IPR Amicus: April 2018

by Sudarshan Singh Shekhawat

Trends in applying Section 124 after ‘Patel Field Marshal’ judgement

Section 124 of the Trademarks Act, 1999 (the Act) provides for a possibility of stay of a trademark infringement suit in case there is a challenge to the registered trademark which is the subject matter of the suit. Subsequent to the Supreme Court judgement in the case of Patel Field Marshal, there have been few cases where the law under Section 124 has been applied in various ways. Delhi High Court in January this year has held that mere plea of invalidity is not sufficient but the party has to show material and substantial pleadings to enable the Court to take a prima facie view. Recently, the Court has also held that a stay of infringement suit under the said provisions is possible only when the defendant requests for framing an issue in the suit, for an already pending rectification/invalidity proceedings. Defendant‘s motion for framing of issue on invalidity of plaintiff‘s mark and stay of the suit was rejected with costs, observing that trial had commenced many years ago for a suit and that the approach of the defendant was mala fide. The two recent decisions made it clear that any challenges to the validity of the trademark in an infringement suit must be credible and be timely made.


Ratio decidendi

  • Design infringement - Protection of aesthetic design when exclusivity claimed in capriciousness or whimsicality of design - Division Bench of Bombay High Court confirms Single Judge order granting temporary injunction
  • Trademark/dress infringement – Delhi High Court grants permanent injunction while ordering punitive damages for violating interim order
  • Trademark – Conceptual similarity in signs, one showing griffin, a mythical creature and other a fanciful creature – Court of Justice of European Union
  • Copyright – Lack of originality in work is touchstone in Rectification Petition – Delhi High Court
  • Trademark – No confusion between words ‘Blacksmith’ and ‘Goldsmith’ – Delhi High Court
  • Copyright – ‘Protected system’ under Information Technology Act, and ‘Government work’ – Supreme Court
  • Patents – Obviating irregularities and limitation in filing for examination – Delhi HighCourt


News Nuggets

  • Geographical Indication - Popular public perception is important
  • Design protection – Appearance of product when not decisive


April, 2018/Issue-81 April, 2018/Issue-81

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