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September 30, 2019

Opposing A Trademark Application Cannot Constitute A “Groundless Threat” Under The Trade Marks Act

Author: Andri Shukla

In the matter of The Chartered Institute of Taxation vs. Institute of Chartered Tax Advisers of India Ltd. [CS(COMM) No. 448/2019], the Delhi High Court vide its order dated August 22, 2019, dismissed The Chartered Institute of Taxation’s (hereinafter ‘CIT’) plaint seeking permanent injunction, damages and declaration for groundless threats under Section 142 of Trade Marks Act, 1999. The relief was sought against, inter alia,the Defendant’s opposition against CIT’s trademark application, allegedly filed on frivolous, misleading and concocted grounds. The Court held that the Defendant could not be injuncted from filing oppositions, as that would impede the Defendant’s access to justice.

CIT is a professional body based in the UK that offers two renowned professional taxation qualifications viz. “Advanced Diploma in International Taxation” (hereinafter ‘ADIT’) and “Chartered Tax Adviser” (hereinafter ‘CTA’). The Defendant, viz. the Institute of Chartered Tax Advisers of India Ltd. (hereinafter ‘ICTAIL’) owns registrations for the marks ‘CTA (Logo)’ and ‘CHARTERED TAX ADVISER’ in India. On the basis of these marks, ICTAIL had opposed CIT’s application for the mark ADIT in class 41.

In the opposition, ICTAIL also alleged (inter alia) that the Plaintiff’s use of the mark ADIT would amount to passing off and infringement of ICTAIL’s device mark for CTA. CIT argued that in view of the evident dissimilarity between the marks, ICTAIL’s opposition was baseless and meritless, thereby constituting a “groundless threat” under Section 142.

The Court, while dismissing the plaint, held that “that anyone having a right that is a legally protected interest and complaining of its infringement and seeking relief through Court, must have an uninhindered, uninterrupted access to law Courts and that Courts ordinarily will not impede access to Courts”. The Court also clarified that Section 142 provides a remedy against mischievous acts by means of circulars, advertisements or otherwise, threatening a person with an action for infringement of trademarks. It was held that “…oppositions filed in statutory proceedings cannot be equated with circulars or advertisement…The intent of the legislature in drafting Section 142…appears to be, to provide remedy against a person, who without instituting legal proceedings, metes out threats of legal proceedings…The Scheme of the Section is, that adjudication of rights asserted should be through legal proceedings and not in public arena”.

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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