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April 22, 2020

Distinctiveness Acquired Post Registration Cannot Be Considered In A Trademark Infringement Suit

Author: Sunidhi Bansal

In the matter of Peps Industries Private Limited vs Kurlon Limited [CS(COMM) 174/2019 with IA 4871/2019 & IA 6715/2019], the Delhi High Court (Mukta Gupta, J.), vide its order dated March 16, 2020 refused the Plaintiff’s interim injunction application in a suit for infringement and passing off, on the ground that the Plaintiff had failed to establish that its mark had acquired distinctiveness as on the date of registration.

The Plaintiff owned a registration for the mark NO TURN as of January 2, 2008 and had commenced use of the mark on January 15, 2008 in respect of mattresses. The Defendant had filed an application for the mark NO TURN on December 24, 2018, claiming prior use since October 8, 2007. Aggrieved by the Defendant’s adoption and use of the mark NO TURN in respect of mattresses, the Plaintiff filed the instant suit.

The Defendant contended that being the prior user of the mark NO TURN, it is protected under Section 34 of the Trade Marks Act, 1999, which prohibits a registered proprietor from restraining a prior user of a similar mark. The Plaintiff countered that the Defendant had been using the mark NO TURN intermittently and in a descriptive sense and could not avail the benefit of Section 34.

The Court concurred with the Plaintiff’s contention and held that the Defendant was not entitled to the benefit of Section 34. The Court then looked into the issue of descriptiveness of the Plaintiff’s mark NO TURN and examined whether evidence of distinctiveness acquired after registration can be considered, as the Plaintiff had not submitted such evidence at the time of registration of the mark.

Analysing the relevant statutory provisions, the Court held that, “…ordinarily evidence of distinctiveness by use ought to be as available on the date of the filing of the application…however, there is a relaxation by extending this period…to the actual date of registration by virtue of Section 31(2)…The evidence in the period post registration of the trademark can only be looked into in proceedings to declare the trademark invalid under Section 57 of the Act and not in a civil suit in a civil court where infringement action of a registered trademark is filed.

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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