4 judgments of the Orissa High Court, the Delhi High Court and 2 other courts applying Trade Marks Act s.124, from 2023–2025, each with a headnote by BRB Legal.
Appeal against refusal of interim relief dismissed. Where a rectification petition against the plaintiff's own registration is pending, section 124(1)(b)(i) requires the suit to be stayed until it is determined, and although section 124(5) preserves the power to grant interim relief, its exercise is discretionary. The District Judge was entitled to assess whether a sufficiently strong prima facie case had been made out and to find none, there being no sufficient material that the relevant class of consumers was likely to be confused. Authorities affirming the statutory presumption of confusion under section 29 were distinguished as decided where validity was not in issue.
Final orders deferred and four questions referred to a Larger Bench on an issue that affects a large number of cases: whether a suit for infringement lies at all against the proprietor of a registered trade mark in respect of the use of that mark; if it does, whether an interlocutory injunction can be granted against such use; whether such an injunction can issue without first proceeding through the sequence contemplated by section 124, namely a section 30(2)(e) defence, a plea of invalidity in response, the Court being satisfied that the plea is tenable, an issue being framed, the suit adjourned for three months, rectification initiated within that period and trial stayed pending its outcome; or whether a bare plea of invalidity in the plaint suffices. The Bench recorded a conflict between Raj Kumar Prasad, followed in Corza, and another view.
Operation of the judgment dismissing the suit stayed pending appeal, and the interim injunction that had run in the trial court since January 2012 continued. The Division Bench held that the trial court's finding that the defendants were the prior user was perverse, the plaintiff's mark having been registered abroad in 1954 and in India on April 25, 1979, against the defendants' adoption in 1992, with no justifiable explanation for that adoption. Questions on whether the person who affirmed the plaint had to enter the witness box, and whether the suit was maintainable for want of filing by an authorised person, were left to the hearing of the appeal.
Appeal against refusal of a temporary injunction disposed of without interference, so the refusal stands. The plaintiff, proprietor of VANKON, had moved a rectification application against the defendant's registered mark VANTON on February 3, 2021, well before filing the suit on July 23, 2021, and so could not escape the rigour of section 124 of the Trade Marks Act; Patel Field Marshal did not assist it. Applying Wander and Gujarat Bottling, the plaintiff's delay and the defendant's unrebutted use of VANTON since 2016 meant that neither irreparable loss nor the balance of convenience favoured the plaintiff. As to classes 7, 11, 21 and 35, the defendant stated it carried on no business in those goods, so no injunction was needed.
