In the matter of Mr. Amrish Aggarwal Trading as Mahalaxmi Product v. M/s Venus Home Appliances Private Limited & Anr [2024:DHC:3911-DB], a Division Bench (Yashwant Varma, J and Ravinder Dudeja, J) of the High Court of Delhi, vide judgment dated May 17, 2024, held that the Court had to mandatorily stay the infringement suit if a party files rectification petition after pleading invalidity.

Section 124(2) of the Trade Marks Act, 1999 [“The Act”] states that in a suit for infringement, where invalidity of either party’s registration is pleaded and “if the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1)…the trial of the suit shall stand stayed until the final disposal of the rectification proceedings”. The question that arose was whether a filing of a rectification petition by one of the parties in the suit would ipso facto result in a stay of the suit proceeding.

The Petitioners argued that doing away with the requirement of stay was correct in law. They also submitted that the Delhi High Court, being vested with the discretion to consolidate proceeding under Intellectual Property Division Rules, obviated need for a stay in the suit proceeding.

The Respondents however submitted that a textual interpretation of Section 124 of The Act would lead to the inevitable conclusion that the abolition of the IPAB would not eliminate the need for a stay of suit proceedings. The Respondents further submitted that the same position of law was also already clarified by the Supreme Court previously. Members of the bar, upon Court’s invitation, also made similar submissions.

The Court reiterated that, “The provision clearly and categorically envisages stay of the suit pending disposal of the rectification proceedings, even where the rectification proceedings are to be instituted before the High Court.” Further adding that Section 124(2) ipso facto stays the suit, by legislative fiat, on a rectification petition being filed. There is no requirement of any orders being passed by the Court for the suit to be stayed. The stay of the suit is an inexorable legislative consequence to the filing of the rectification petition.

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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In the matter of Anil Kumar Gera Trading As Alka Food Industries vs Mr Ramesh Chander Trading As Anil Food Industries [C.O.(COMM.IPD-CR) 750/2022], a Single Judge [Sanjay Narula, J.] of the Delhi High Court, vide judgment dated May 2, 2024, ruling in the favour of the Petitioner, has held that non-compliance with the procedural requirement of notifying a party who disputes the subject matter of a copyright application would render such copyright registration invalid.

Section 16(3) of the Copyright Rules, 1958 states that “The person applying for registration shall give notice of his application to every person who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it.” The question to be considered was whether the person to whom such notice is being given must be a necessary party.

The Petitioner contended that there was a requirement for the Respondent to issue notice to the Petitioner at the time of scrutiny and registration of the subject copyrights. The Respondent, however, argued that there was no requirement for the Respondent to give notice to the Petitioner at the time of securing the copyright registration, as the Petitioner does not fall in the category of an “aggrieved person”.

The Court rejected the Respondent’s narrow reading of Section 16(3) and held that Rule 16(3) of the Copyright Rules, 1958, mandates that any person applying for copyright registration must give notice to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant. The Court added that even if the narrow interpretation is accepted that the applicant cannot be expected to identify every person who may have an interest in the subject matter—the disjunctive wording of the provision, particularly the phrase “or disputes the rights of the applicant” must be taken into account. Accordingly, the Court further held that “the failure to provide notice constitutes a direct violation of Rule 16 (3) of the 1958 Rules. Such non-compliance renders the registration invalid non-compliance with Rule 16(3) undermines the procedural integrity of the registration process, rendering the registration procedurally incorrect”.

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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In the matter of Therelek Machines Private Limited v. Therelek Engineers Private Limited & 2 Ors. [W.P. No. 28029 of 2023], a Single Judge (Anant Ramanath Hegde, J.) of the High Court of Karnataka vide order dated February 28, 2024, allowing a writ petition, has held that even if a rectification application filed by third-party is pending, an application can be filed for stay of proceedings for trademark infringement.

Section 124(1)(i) of the Trade Marks Act, 1999 (“the Act”) states that “Where in any suit for infringement of a trade mark—(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;” The issue was whether for filing an application under Section 124 of the Act for stay of trademark infringement suit, the pending rectification application must have been filed by the same party.

The Petitioner contended that as an application for rectification of the disputed trademark was pending, they can move an application under Section 124 of the Act for the stay of proceedings for trademark infringement. The Respondent No. 1, on the other hand, contended that since the rectification application was not filed by the Petitioner but a third-party, the suit cannot be stayed. Respondent No. 1 submitted that a conjoint reading of relevant provisions of the Act leads to the conclusion that only a party to the rectification proceeding can file an application under Section 124.

The Court rejected Respondent No. 1’s contention and held that the party filing the application for stay of trademark infringement suit does not need to be the same party who filed the rectification application. The Court stated that “…words used in Section 124 of the Act of 1999 do not indicate that application for rectification…and application under Section 124 of the Act of 1999 ought to be filed by the same person. What is contemplated under Section 124 of the Act of 1999 is, ‘an application for rectification of either plaintiff’s trademark or the defendant’s trade mark’. The provision does not say that party to the suit must have filed an application.”

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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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.”

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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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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