To Be or Not to Be: The Trial of Trademark Issues

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To be or not to be 'tried'

In a much complicated matter of Lupin v. Johnson And Johnson, the Hon’ble High Court of Bombay was referred in search for a much debated question of law, which was adjudicated in a fine manner. The judgment presided over by the Hon’ble Chief Justice Mr. Mohit S. Shah is well phrased and delves deep into the issue, “Whether the Court can go into the question of the validity of the registration of the Plaintiff’s Trade mark at an interlocutory stage when the Defendant takes up the defence of invalidity of the registration of the Plaintiff’s trade mark in an infringement suit?”

Briefly stating, the facts of the case are; The Plaintiff Lupin Limited, is a company incorporated under the Companies Act, 1956 carries on a business of manufacturing, marketing and selling pharmaceutical products and claims to be amongst top five in the Indian Pharmaceutical market, with an international presence. The defendant, Johnson And Johnson is a company registered in New Jersey, USA and is also in the business of manufacturing and selling of pharmaceutical products. The suit was filed for infringement in respect of registered trade mark “LUCYNTA” registered in Class 05 of the Fourth Schedule to the Trade Marks Act by the Plaintiff with effect from 2012. The defendant claimed to being the registered proprietor of the trade mark “NUCYNTA” in the international market since 2008.

Both the Plaintiff’s as well as the Defendant’s Counsels presented elaborate arguments on the much debated question of law, the focal point being Sections 28, 31, 57, 93, 100, 124 and 125 of the Trade Marks Act, 1999. Dr. V. Tulzapurkar contended that, the consideration of the plea of invalidity of the registration in a suit for infringement in the Court at an interlocutory stage is contrary to the objects of the Trade Marks Act. Further, he argued that the object of providing registration of a trade mark and recognizing such a registered proprietor’s right to use the mark exclusively while preventing other entities from using an identical/ deceptively similar mark is to prevent the necessity of proving the proprietor’s title to the mark in each and every case. In short, the Plaintiff’s counsel directed the Court to look into the scheme of the above mentioned Sections of the Trade Marks Act and proposed that the question of the validity of registration of a trade mark cannot be decided be decided by a Court at all at any stage of a suit and the same can be decided only by the Registrar or the IPAB. That from the combined reading of the sections 28, 31, 124 and 125, the legislature’s intent is that a civil court while trying out an infringement action should not consider the plea of invalidity of registration of the trade mark at any stage. Comparisons were drawn with similar Sections in the Design Act, 2000 and the Patents Act, 1970; where the sections expressly provide the authority to question the validity of a registration to a Civil Court. The Plaintiff’s Counsel stated that the legislature was conscious of the existing provisions in the above mentioned statutes yet didn’t provide for a similar provision under the Trade Marks Act which reflects its intent.

Next, the defendant’s learned senior counsel Mr. Dhond and Mr. Ravi Kadam, presented their arguments before the Hon’ble Bench. The Counsels raised the issue whether the framed question of law was the appropriate question in the first place. According to them, the real issue needing judicial inquiry was whether the obvious invalidity/ unregistrability/ fraudulent nature of registration by the Trade Marks Registry is a factor completely irrelevant to enquiry by a Court at the stage of grant of an interlocutory relief. When the Court is convinced of the obvious invalidity in registration of a trade mark, which is unconscionable, should it move further disregarding its own assessment of a mark’s registration being a matter of substantial disquiet?

A conjoint reading of Sections 28 and 31, give an idea firstly, that registration of a Trade mark, if valid, gives the registered proprietor exclusive right to use the trade mark and secondly that in all legal proceedings relating to trade mark, the registration shall be prima facie evidence of the validity. Attention is to be paid to the use of terms, if valid and prima facie, which have been used by the legislature instead of the terms valid and conclusive. Thus, the drafting speaks out for the intent of the legislature which strongly goes in favour of the validity in registration of a trade mark, however, the questioning by the Court as to such validity cannot be ruled out completely. It is true that the fact of registration cannot be brushed aside by the Court, thus, the burden of proving the invalidity sets heavily on the challenger.  

The Hon’ble High Court discussed judgments of Aravind Labotatories v. V.A. Samy Chemical Works, Gufic Ltd. v. Clinique Laboratories, Lowenbrau AG and Anr. v. Jagpin Breweries Ltd., M/s. Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd. and S. M. Dye Chem v. Cadbury (India) Ltd., in order to decide this much debated question, finally relying on the Supreme Court decision in Milment Oftho Industries v. Allergen Inc.  

The Hon’ble High Court reached a conclusion after much debate and discussion, that the expression if valid and prima facie evidence of the validity of the trade mark under Sections 28 and 30 respectively, must be given their plain and natural meaning, which is that the registration of a trade mark isn’t a valid and conclusive evidence and when in serious doubt as to the validity of the registration, a Court, trying an Interlocutory Petition for interim injunction can question it. There is no express or implied bar taking away such jurisdiction and power of the Court to consider the question of validity. However, the challenge to the validity of the registration can finally be decide only in rectification proceedings before the Intellectual Property Appellate Board. But, the challenger must strongly prove the invalidity and to direct the Court towards not granting a completely inequitable relief of interim injunction in favour of the registered proprietor. Even though the Courts are in practice of granting the relief of interim injunction in favour of the registered proprietor of a trade mark, such practice doesn’t act as a total embargo on the power of the Court to decide in favour of the challenger if the registration is ex facie invalid and shocks the conscience of the Court.

MIPR 2015 (1) 0053

Contributed By : Hetvi Trivedi (Advocate)
   Designed By : Vikash Singh