In the matter of Jindal Industries Private Limited v. Suncity Sheets Private Limited and Anr. [IA 18962/2023 in CS(COMM) 679/2023], a Single Judge (C. Hari Shankar, J.) of the High Court of Delhi vide judgement dated March 7, 2024, ruling in the favour of the defendants, has held that the bona fide use of one’s own name is protected against interference from the proprietor or registered user of a registered trademark.

Section 35 of the Trade Marks Act, 1999 (“the Act”) states that “Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.” The issue was whether the protection against interference from proprietor or registered user of a registered trademark is available only when one’s name is used in a bona fide manner as a source identifier or is also available when the name is used as a trademark.

The Plaintiff contended that the benefit of Section 35 would be available only if a name were used as a source identifier, and not if it was used “in the trade mark sense” or “as a trade mark”. Defendant No. 2 contended that Section 35 of the Act encompasses the right to use the name of the predecessor in business, and therefore, it also encompasses the use of one’s name as a trade mark.

The Court rejected the Plaintiff’s contention and held that in the absence of any caveat found in Section 35 of the Act, while itmay be arguable that the use of one’s name is permissible only as an identity marker but not when it spills over into “trade mark” territory, such interpretation “…would be reading a non-existent proviso into Section 35 and, in effect, rewriting the provision”. The Court further held that Section 35 of the Act “…protects bona fide use of one’s own name, and proscribes any interference therewith. No exception is created in a case where the name is used as a trade mark, or otherwise.”

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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…”

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In the matter of Puma Se v. Indiamart Intermesh Ltd. [2024/DHC/20], a Single Judge (Justice C. Hari Shankar) of the High Court of Delhi, vide judgment dated January 03, 2024, while rejecting the ‘safe harbour’ benefits to an intermediary platform, held that lack of a verification mechanism while registering sellers on the platform amounts to aiding sale of counterfeit goods and infringement.

Exemptions to an intermediary’s liability are provided under Section 79 (2) of the Information Technology (IT) Act, 2000, wherein Section 79(2)(b) and (c) prescribes that “the intermediary does not (i) initiate the transmission, (ii) select the receiver of the transmission, and (iii) select or modify the information contained in the transmission” and “the intermediary observes due diligence while discharging his duties” respectively. Further, Section 79(3)(a) provides that the exemption does not apply if “the intermediary has conspired or abetted or aided or induced …in the commission of the unlawful act”. The issue was whether the exemption from liability is available to an intermediary platform who is not verifying the sellers while registering them.

Plaintiff contended that hidden use of the Plaintiff’s registered mark by the defendant amounts to infringement, especially when the Defendant is using the mark in the course of its trade and making gains out of such use. The Plaintiff further contented that by not verifying sellers, the Defendant platform is aiding and abetting infringement and passing off.

Defendant sought exemption under Section 79(2) of the IT Act, and contented that infringement takes place at the hands of the user selling counterfeit products and not the intermediary itself. Defendant submitted that providing a drop-down option of registered trademarks to the sellers for listing their goods is a backend operation and does not qualify as infringement of the marks provided in the drop-down.

The Court, while rejecting the defense, held that “allowing the prospective seller to register themselves without any prior verification, it can prima facie be said that IIL has aided commission of the unlawful act of counterfeiting, using its platform as a springboard for the purpose. Aiding is a step before abetting… providing of “Puma shoes” as a drop down option to the prospective seller prima facie aids the seller in his counterfeiting design” The Court further held that “mere incorporation, in its terms and conditions of use, or the requirement of an undertaking being required to be given by the prospective seller that he would not be infringing any intellectual property right of third party, is hardly due diligence.”

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In the matter of Manya Vejju v. Sapna Bhog [2023:BHC-AS:37466], a Single Judge (N. J. Jamada, J.) of the High Court of Bombay, vide judgment dated December 13, 2023, held that FIR alleging copyright infringement can render the remedy against threat of legal proceedings infructuous.

Section 60 of The Copyright Act, 1957 states that “Where any person claiming to be the owner of copyright…threatens any other person with any legal proceedings or liability in respect of an alleged infringement of the copyright, any person aggrieved thereby may… institute a declaratory suit that the alleged infringement… was not in fact an infringement..”. The proviso, however, clarifies that “…this section shall not apply if the person making such threats, with due diligence, commences and prosecutes an action for infringement of the copyright…”. The question that arises is whether lodging an FIR can be considered an “action” for infringement of copyright, under proviso to Section 60, thereby providing immunity against remedies for groundless threats of legal proceeding.

The Appellant-Defendant, filing the instant appeal against the order of the District Court restraining it from giving groundless threat of legal proceeding alleging infringement, contended that since both civil and criminal remedies are available to copyright owner under Copyright Act, 1957, an FIR should constitute an “action” within the meaning of proviso to Section 60, thereby rendering the instant suit infructuous.

The Respondent-Plaintiff contended that a criminal enforcement action is not an “action” contemplated by the proviso to Section 60. The respondent further submitted that the action contemplated under the proviso to Section 60 must be an action in which there could be effective and complete adjudication which was only possible before the Court.

The Court, while holding that FIR can be considered an “action” as mentioned in the proviso, observed that “Indisputably, the infringement of copyright gives rise to both civil and criminal liability. Where…FIR is lodged with all the particulars requisite for determination of the question of infringement of copyright, which eventually leads to a trial on the question of infringement of copyright, it would be rather difficult to hold that the FIR would not constitute an action within the meaning of the proviso to Section 60…”. The Court, however, clarified that “whether FIR constitutes a threat of groundless action under the main part of Section 60 or constitutes an ‘action’ under the proviso thereto, turns on the facts of the given case”.

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In the matter of Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. [2024:DHC:946], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, vide decision dated February 9, 2024, held that the Trade Marks Registrar has no discretionary powers under Rule 50 of the Trade Marks Rules, 2002 (hereinafter, ‘2002 Rules’) and Rule 45 of the Trade Marks Rules, 2017 (hereinafter, ‘2017 Rules’) to extend the time period for filing evidence in an opposition proceeding at the TM Registry.  

Section 21 the Trade Marks Act, 1999 states that “(4) Any evidence upon which the opponent and the applicant may rely shall be submitted…within the prescribed time to the Registrar….” The corresponding Rule 45 of the 2017 Rules require that the Opponent file evidence by way of affidavit “within two months from the service of the copy of the counterstatement…”. Likewise, the corresponding Rule 50 of the erstwhile 2002 Rules require that the Opponent file its affidavit of evidence “within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter”. The issue that arises is, whether the time-period as prescribed under the Trade Marks rules mandatory or the Registrar enjoys discretionary powers to extend the time-period.

The Appellant filed the instant appeal against an adverse order of the Registrar of Trade Marks deeming an opposition filed by the Appellant as abandoned due to delay in service of evidence upon the Applicant. The Appellant, while seeking extension of time for service of evidence, contended that the two-month period for the filing and service of evidence is not a mandatory period. The Respondent contended that the deletion of the clause “unless the Registrar otherwise directs” (which was present in Rule 53 (2) of the Trade Marks Rules, 1959) from the 2002 Rules and the 2017 Rules would mean that the discretion of the Registrar has been taken away.

The Court, while holding that an opposition cannot be ordered as abandoned owing only to delay in service of evidence (which was otherwise filed at TM Registry in time), also held that the time-period prescribed under 2017 and 2002 Rules for filing evidence is strict and mandatory. The Court, while comparing the corresponding provisions under the 1959 Rules, 2002 Rules and 2017 Rules, observed that  “…the discretion, which was vested with the Registrar, has been taken away and the time period for filing of evidence has also been reduced…The above transition and evolution of the Rules points to a clear intention to ensure that strict timelines are prescribed for conclusion of pleadings/evidence in opposition proceedings… extensions cannot be granted, when the time periods are specifically prescribed in the Rules”

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