INDIA: Full Bench Upholds Power of Courts to Examine Validity of Trademark Registration at Interim S

In a recent decision of December 23, 2014, the Full Bench of the Bombay High Court, while adjudicating two separate matters—Lupin Ltd. v. Johnson & Johnson and Shakti Bhog Foods Limited v. Parle Products Private Limited—delivered a combined judgment settling the contradictory standards of various High Courts of India. The issue at hand was the power of civil courts to question the validity of registration of a plaintiff’s trademark at an interlocutory stage when the defendant takes up the defense of invalidity of registration of the plaintiff’s trademark in an infringement suit.” The Full Bench, while deciding the above issue in the affirmative, emphasized the requirement of having “a very high threshold of prima facie proof.”

The appellant/plaintiff’s main contention was that the purpose of obtaining a trademark registration would be defeated if courts were permitted to consider a plea of invalidity of a trademark at the interim stage. On the other hand, the respondent/defendant contended that if the court was held powerless in this respect, justice would not be served and the defendant would be deprived of an important right of defense conferred on it by the statute.

The Full Bench, on consideration of the issues, held that “in cases where the registration of a trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court 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 is, therefore, open to the Court to go into the question of validity of registration of plaintiff’s trade mark for this limited purpose, to arrive at a prima facie finding.”

The decision will have a major impact on trademark litigation practices in India, and it will be interesting to see how often the Courts take up the question of validity of registered marks.

The decision is final subject to appeal at the Supreme Court.

Credits:

Contributor: Sharabh Shrivastava, Chadha & Chadha, New Delhi

Verifier: Gaurav Miglani, Worldwide Intellec, New Delhi

"This article first appeared here http://www.inta.org/INTABulletin/Pages/INDIAFullBenchUpholdsPowerofCourtstoExamineValidityofTrademarkRegistrationatInterimStageforLimitedPurposes.aspx in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”