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March 11, 2024

Court Case Bulletin (CCB): Plea For Invalidity Of A Trademark Registration Can Be Taken In A Counter Affidavit To An Interlocutory Application

Author: Shivanshi Gupta

In the matter of VARAMM Healthcare Private Limited v MGM Healthcare Private Limited [C.S.(Comm.Div.) No.2 of 2023], a Single Judge (Justice Abdul Quddhose) of the High Court of Madras, vide judgment dated February 19, 2024, held that a defendant may plead invalidity of trademark registration in response to an interim injunction application even if such plea is not taken in the written statement in the lawsuit.

As per Section 124 of the Trade Marks Act, 1999 ( the “Act”) “where in any suit for infringement of a trade mark (a) the defendant pleads that registration of the plaintiff’s trade mark is invalid… the court trying the suit shall… (ii) if no such proceedings are pending and the court is satisfied that the plea …is prima facie tenable… adjourn the case for a period of three months…” The issue in this case was whether the defendant’s plea under Section 124, that the plaintiff’s registration is invalid, should necessarily be in the written statement to the lawsuit or whether submitting a plea in reply to plaintiff’s interim injunction applications would suffice.

The plaintiff argued that Section 124 of the Act does not apply unless a plea that the plaintiff’s trademark registration is invalid is submitted in the written statement by the defendant. The defendant, on the other hand, contended that the statutory right to rectification of the trademark cannot be restricted simply because the defendant did not submit the plea in the written statement. The defendant further contended that Section 124 of the Act does not necessarily require the plea to be taken in the written statement only.

The Court, while allowing defendant’s plea, held that “A narrow interpretation cannot be given to the meaning of ‘plea’ in Section 124 of the Trademarks Act. Any statutory remedy cannot be curtailed based on a narrow interpretation of the word ‘plea’ as the power to exercise a statutory remedy is a fundamental right…Admittedly, plea as found in Section 124 of the Trademarks Act has not been defined. Therefore, the plea…can be taken through any form not restricted to written statement alone…would suffice if the same is taken by the defendant in the counter affidavit filed in the interim injunction applications filed by the plaintiff…The object of Section 124 is to aid a party to a suit to seek for rectification of a registered trademark if they are able to prima facie satisfy the Court that tenable grounds have been raised for rectification of the registered trademark…”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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