22 January 2015

Validity of trademark can be questioned in infringement suit

Court can go into the question of validity of registration of the plaintiff's trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the said registration in an infringement suit. Larger Bench of the Bombay High Court recently while holding so observed that court in such cases is not powerless to refuse to grant an injunction but for establishing these grounds, a very high threshold of prima facie proof is required. It was held that only in exceptional circumstances, like registration being ex facie illegal or fraudulent that interim injunction in favour of the registered proprietor of the trade mark is to be refused. The court in this regard noted that though a challenge to the validity of the registration of the trade mark can finally succeed only in rectification proceedings before the IPAB, held that there is no bar on civil court to consider the challenge to the validity of the trade mark at interlocutory stage by way of a prima facie finding.

It was also noted that for the purpose of grant of injunction, no different parameters are to be applied in a case involving registered trademark. The court in this case of Lupin Ltd. v. Johnson and Johnson also observed that provisions of the Trade Marks Act, 1999 are not comparable with the provisions of the Designs Act, 2000 and the Patent Act, 1970, which contain express provisions to raise the ground of invalidity.


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