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IP Case Digest · Trade Marks Act s.50

Section 50, Trade Marks Act: case law

3 judgments of the Delhi High Court and the Madras High Court applying Trade Marks Act s.50, from 2024–2026, each with a headnote by BRB Legal.

3judgments
2courts
2024–2026years

Dasaprakash Restaurant and Ice Cream Parlour Pvt. Ltd. & Anr. v. Mysore Dasaprakash & Ors., FAO(OS)(IPD) 1/2023

Delhi High Court · Injunction granted

Appeals dismissed and an injunction upheld in a dispute over a restaurant name. The appellants could not be treated as permissive users, the mark in question being the very mark registered in favour of the respondents, and the appellants' use for restaurants and like activities was allied and cognate to the registered specification. A prima facie case of infringement with likelihood of confusion under section 29(2)(b) was therefore made out, and following Midas Hygiene an injunction had to follow.

ITC Limited v. The Deputy Registrar of Trade Marks & Ors., C.A.(COMM.IPD-TM) 81/2022

Delhi High Court · Disposed of

Refusal to take further evidence on record under Rule 53 of the 2002 Rules, now Rule 48 of the 2017 Rules, upheld and the appeal dismissed. Following Sun Pharma Laboratories v. Dabur India, the Court held the timelines for evidence in opposition are mandatory and leave the Registrar no discretion to extend. Rule 53 is a standalone provision but cannot be read detached from the framework of the Act: the inflexibility of Rules 50 to 52 cannot evaporate at Rule 53. The residual power is triggered when the Registrar herself thinks further evidence is needed, akin to a court's suo motu power, and the bare language does not allow a party to trigger it. It is not a valve to allow a deluge at the final stage, and even a trickle at a party's behest would render the mandatory timelines otiose. It is to be used in extremely rare circumstances, and cannot operate as a further opportunity for extension. Diligence is expected of applicant and opponent alike, and a party cannot leverage institutional delay to transgress a mandatory timeline.

Lupin Limited v. The Registrar of Trade Marks & Mukesh Kumar P., (T)CMA(TM) 67/2023

Madras High Court · Remanded

An opposition was wrongly deemed abandoned for want of evidence. The obligation to file evidence under Rule 50 arises only after the Registrar has served the applicant's counter statement on the opponent under section 21(3) read with Rule 49, and no counter statement was ever served. Evidence is needed only once there is a dispute, and the dispute arises on the counter statement. If none was filed, it is the application that stands abandoned, and that cannot reflect on the opponent.

Other provisions of the Trade Marks Act

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