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April 27, 2022

Court Case Buletin (CCB): An Action Of Infringement Can Be Brought Against A Registered Trademark

Author: Intern - Tarini Sharma

In the matter of HTC Corporation v. Mr. LV Degao & Ors. [Civil Suit (Commercial) No. 263 of 2020], Single Judge [Asha Menon J.] of the High Court of Delhi, vide order dated April 6, 2022, has effectively held that an action of not only passing off but also infringement can be brought against a registered trademark.

Section 29(4) of the Trade Marks Act 1999 (“Act”) states that “A registered trade mark is infringed by a person who…uses in the course of trade, a mark…” Further, section 124(5) states that “The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order…” The question that arises is whether ‘infringement of a trade mark’ under section 124(5) r/w section 29 (4) would include infringement only by an unregistered trademark or also by another registered trademark.

The Plaintiff alleged that Defendant registered a mark identical to its ‘HTC’, against which registration it had also filed rectification proceedings. The Plaintiff contended that Defendant’s use of an identical mark on similar goods amounted to infringement and passing off.

The Defendant submitted that an infringement action can only be brought if the alleged infringer has no registration. The Defendant stated that since it was the registered proprietor of the mark ‘HTC’, the Plaintiff’s case had no merits.

The court held that “Section 29(4)… is applicable only against a defendant, who does not have proprietorship in a registered Trade Mark. Would that mean that the court when faced with a situation as prevailing in the present case, would be helpless and would it also mean that the plaintiff could seek only protection against passing off. This Court is of the opinion that since Section 124 deals with a situation where the validity of the registration of the trade mark is being questioned and Section 124(5) empowers the court to pass interim injunction orders, it is only logical that even when there are two registered Trade Marks involved and the plaintiff seeks protection against the user of a similar or identical trade mark, which has been registered in the defendant’s name, the court can consider not just the question of passing off, but also of infringement since Section 124 of the T.M. Act is in relation to a trade mark and not to mere passing off.”

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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