Delhi High Court: Right to seek Cancellation of Mark & Rectification of Register are Independent Rights

Delhi High Court: Right to seek Cancellation of Mark & Rectification of Register are Independent Rights

The Delhi High Court observed that, the right to seek cancellation of a mark and rectification of the register, conferred by Section 57 and by Clause (ii) of the second part of Section 124 of the Trade Marks Act are independent rights, which are both available for invocation by an interested party.

This petition was preferred by Anubhav Jain, one of the Directors in M/s. Jain Shikanji Private Limited (hereinafter referred to as JSPL). The respondent- Satish Jain had earlier filed a suit against JSPL alleging that the manner in which the latter was using the mark 'Jain Shikanji' was same as his registered mark 'Jain Shikanji'. In November 2022 the trial court passed an interlocutory injunction against JSPL - the matter is pending in appeal before the high court now.

Raising a preliminary objection against the maintainability of the petition filed by Anubhav Jain, Satish Jain relied on Section 124 of the Trademarks Act since a suit alleging infringement of trademark is pending before the civil court.

The Court noted for Section 124(1)(a) to apply, it would be necessary for JSPL to have pleaded in the suit for trademark infringement that the registration of Satish Jain's trademark was invalid.

However, the Court was told no such plea of invalidity of Satish Jain's trademark has been raised.

"Even on this sole ground, therefore, it would be apparent that Section 124 would not apply in the present case at all," said the Court.

The single judge Justice C. Hari Shankar ruled, "assuming such a plea had been raised, what the clause envisages, in a situation where no proceeding for rectification of the register of trade mark is pending and the learned Trial Court is satisfied regarding prima facie tenability of the plea regarding invalidity of the registration of the trade mark, as raised as a defense in the suit, is that the learned Trial Court would, then, raise an issue regarding validity of the contested trademark and adjourn the case for three months to enable the contesting defendant to apply to the High Court (earlier the learned IPAB) for rectification of the register of trade marks."

The High Court further enunciated and laid down the certain specific circumstances envisaged under Section 124 below:

1) In the first instance, there must be a suit by a plaintiff against a defendant alleging infringement, by the defendant, of the plaintiff's trademark.

2) The defendant must, in the said suit, raise as a plea in defense, invalidity of the plaintiff's trademark.

3) At that time, no proceedings for rectification should be pending.

4) The learned Trial Court hearing the suit, should be satisfied, prima facie, that the plea of invalidity of the plaintiff's trademark, as raised by the defendant, is tenable.

The High Court was of the view that under these circumstances coalesce, Section 124 requires the learned Trial Court to raise an issue regarding validity of the plaintiff's trademark and adjourned the case in order to enable the defendant to move the appropriate forum— now the High Court—for rectification of the register.

Observing that Section 124 has no application, as the petitioner never raised, in its written statement by way of defense of the invalidity of Satish Jain's trademark suit for the infringement as even otherwise, Section 124 cannot possibly be read in a manner as to defeat the right of the petitioner to defend the independent right of the petitioner to invoke Section 57 of the Trademarks Act, seeking rectification of the register of trademark and cancellation of the trademark of Respondent.

Lastly, the Court concluded the right available under Clause (ii) of the second part of Section 124 of the Trademarks Act was not, therefore, in derogation of the right available under Section 57. It is in addition to the said right. It does not, therefore, detract from the right that Section 57 otherwise confers.

The High Court disposed the petition.