Use Of Registered Trademark Does Not Amount To Infringement Merely Because It Is Identical To Earlier Existing Trademark: Delhi HC
|Finding that a challenge has specifically been raised, and Section 29(1) and Section 30(2)(e) the Trade Marks Act, 1999 proscribe the Court from returning any finding of infringement without in the first instance invalidating the defendants’ registration, the Delhi High Court accepted the suggestion of amici to examine the validity of the defendants’ trademark in exercise of suo-motu powers conferred on it by Section 57(4), which is vested in it independent of Section 124.
The High Court held so while considering an 18-year-old suit in which, owing to circumstances for which no one can really be said to be responsible, an application dated April 29, 2004, filed by the defendants for registration of the impugned word mark ‘SUPER POSTMAN’ has come to be allowed by the Trade Marks Registry after 19 years, on 13 February 2023.
A Single Judge Bench of Justice C. Hari Shankar observed that “infringement can only be by a person who is not the holder of a registered trademark and that the use of a registered trademark can never amount to infringement even if it is identical to an earlier existing trademark. Any finding of infringement by the holder of a registered trademark is, therefore, per se illegal and unknown to the Trade Marks Act”.
Advocate Tahir Ashraf Siddiqui appeared for the Plaintiff, whereas Advocate G.D. Bansal appeared for the Defendant.
The brief facts of the case were that when the suit for infringement of the mark ‘SUPER TOWN’ was filed, the application of the defendant’s seeking registration of the impugned mark, was pending with the Trade Marks Registry. The application came to be allowed and the mark was registered. Thereafter, the plaintiff under Section 1241 of the Trade Marks Act, 1999 alleges that, by using the mark SUPER POSTMAN, in respect of edible groundnut oil, the defendants are infringing the registered trademark of the plaintiff, which is POSTMAN, also used for edible groundnut oil. Allegations of using a deceptively similar trade dress have also been levelled. The plaintiff questioned the validity of the registration granted to the defendants and sought for adjournment of the suit so that the plaintiff could file rectification proceedings against the grant of the registration to the defendants’ SUPER POSTMAN trademark. In doing so, however, the plaintiff failed to notice that Section 124(1) applies where there is a pending suit for infringement of a trademark.
After considering the submission, the Bench found that Section 29 of the Trade Marks Act specifically envisages, in each of its clauses, infringement only by a person who is not the holder of a registered trademark, and Section 30(2)(e) clearly holds that use of a trademark which is registered would not amount to infringement.
The Bench noted that the fact that the defendants’ trademark is registered is now part of the record and the Court cannot possibly shut its eyes to this fact, since by operation of Section 23(1)3 of the Trade Marks Act, the registration of the SUPER POSTMAN trademark granted to the defendant’s dates back to 29 April 2004 which was the date of application.
The defendants’ SUPER POSTMAN trademark is, thus, deemed to be registered with effect from 29 April 2004, i.e., even prior to the filing of the present suit, added the Bench.
The Bench went on to illustrate that if injunction is granted to the plaintiff against the defendants on the premise that the defendants are infringing the plaintiff’s registered trade mark POSTMAN, by using the mark SUPER POSTMAN, then the Court would, necessarily have to hold, in the first instance, that the registration of the mark SUPER POSTMAN, as granted to the defendants on Feb 13, 2023, is invalid.
The right conferred by Section 28(1), on the plaintiff, as the holder of a registered trademark, to obtain relief against infringement thereof is, therefore, subject to the exception contained in Section 28(3), where the allegedly infringing mark is also registered in favour of the defendant.
Accordingly, the High Court listed the matter to be heard on Oct 31, 2023 on the aspect of validity of the registration granted to the defendants’ SUPER POSTMAN trademark on Feb 13, 2023.
Cause Title: NADEEM MAJID OOMERBHOY v. GAUTAM TANK AND ORS [Neutral Citation: 2023: DHC: 6555]
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