Can't Reject Claim Of Infringement Merely Because Defendant Could Seek Removal Of Plaintiff's Trademark Due To 'Non-Use': Delhi High Court

Section 47 deals with the right of one person to apply to the Registrar of Trade Marks to have the trademark of another person taken off the register citing continuous non-use for 5 years, up to a period of three months prior to the application.

A division bench of Justices C. Hari Shankar and Ajay Digpaul in its 115-page judgment ruled,

“It is, no doubt, open to the infringer, as it is to everyone else, to apply to the Registrar of Trade Marks for taking off the registered trade mark from the Trade Mark register and, for that reason, to cite five years' non-use of the registered trade mark as a ground for seeking cancellation. So long as this is not done, and the registered trade mark remains on the register, however, infringement of the registered trade mark is impermissible and, if infringement takes place, the right of the proprietor of the registered trade mark to relief against infringement is statutorily guaranteed.”

It added,

“The Court cannot refuse to grant relief where it finds infringement on the ground that the defendant could possibly, if it so chose, institute proceedings for cancellation of the asserted mark of the plaintiff under Section 47(1). Nor can the Court presume the outcome of such proceedings, even if they were instituted. So long as they are not instituted, the registration of the asserted mark of the plaintiff has to be accorded due respect.”

In this case, the Appellant having registered trademark 'CONTIN' sought to restrain the Respondent from using impugned 'FEMICONTIN' mark or any of the CONTIN family of marks.

A Single judge had denied the relief citing Section 47, holding that the Appellant had never used CONTIN as a standalone mark for any product.

Stating that the single judge erred in denying relief on this ground, the division bench said,

“Section 47 is not an exception either to Section 29 of the Trade Marks Act, which defines infringement, or to Section 28(1) read with Section 135 which entitles the proprietor of a registered trade mark to an injunction against an infringer…Ergo, howsoever fragile the validity of a registered trade mark may seem, so long as it remains on the register, the right against infringement, available under Section 28(1), stands protected.”

The Court also referred to Section 22(3)50 of the Designs Act, and Section 107(1)51 of the Patents Act which envisage that any ground, on which the asserted design/ patent of the plaintiff is vulnerable to invalidation, will be available as a defence against a claim of infringement.

There is no such provision in the Trade Marks Act, the High Court pointed. It observed,

“Inasmuch as these are cognate statutes protecting infringement of intellectual property, it must be presumed that the legislature, in not providing, in the Trade Marks Act, any provision analogous to Section 22(3) of the Trade Marks Act or Section 107(1) of the Patents Act, did so consciously. The legislative mandate has to be respected.”

The High Court also referred to Section 31(1) of the Trade Marks Act which provides that the registration of a trade mark would by itself be prima facie evidence of its validity.

“This prima facie presumption of validity can be unseated only if the defendant succeeds in having the trade mark invalidated under Section 57(1) or (2)53, or Section 47, of the Trade Marks Act. So long as this is not done, the right to relief against infringement, available to every registered trade mark under Section 28(1), stands preserved,” the High Court ruled.

Appearance: Mr. Pravin Anand and Ms. Prachi Agarwal, Advs for Appellant; Mr. Gagan Gupta, Sr. Adv. with Mr. Saurabh Gupta, Adv. for R-1

Case title: Modi Mundipharma Pvt. Ltd v. Speciality Meditech Pvt. Ltd. & Anr.

Case no.: RFA(OS)(COMM) 8/2023

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