Lupin Ltd. v. Johnson & Johnson and Shakti Bhog Foods Ltd. v. Parle Products Pvt. Ltd.

Lupin Ltd. v. Johnson & Johnson

and

Shakti Bhog Foods Ltd. v. Parle Products Pvt. Ltd.

Bombay High Court (Full Bench)

Date of decision: 23.12.2014

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 plaintiffs trade mark in an infringement suit?”

Submissions on behalf of the Plaintiff:

• The consideration of the plea of invalidity of the registration is contrary to the objects of the Trade Marks Act, 1999.

• Exclusive Jurisdiction is conferred on Registrar of Trade Marks/Intellectual Property Appellate Board to decide the validity of the registration.

• The right provided under Section 28 subsists so long as the registration is valid and the same remains valid till the mark is expunged from the register in rectification proceedings.

• Legislative intent is only to allow the Defendant to raise the defence of invalidity which if and only if accepted in rectification proceedings by the appropriate forum, would result in rejecting the claim of the Plaintiff.

• The words of Section 31 “prima facie valid” show that so long as the mark is on the register and till it is not expunged by the appropriate authority the registration must be considered as valid.

• In the Designs Act, 2000 and the Patents Act, 1970, specific provisions are provided to confer jurisdiction on the Court to decide the invalidity of the Design or Patent (as the case may be). However, no such provision exists in the Trade Marks Act, 1999.

Submissions on behalf of the Defendant:

• There is no express statutory bar against a Defendant in an infringement action raising at an interlocutory stage, defence of invalidity of registration nor is there any bar to the Court considering such defence at an interlocutory stage.

• Section 28, gives right to the registered proprietor if the registration is valid.

• Section 31 only gives prima facie presumption of validity in favour of a registered trade mark.

• If it is to be held that the Court is powerless to refuse the question of invalidity of mark, the words of the statute will have to be re-written to the effect that the registration of trade mark is “conclusive proof” of it’s validity and/or once a mark is registered, till it is set aside, no Court shall have any power to question it’s registration.

Submissions on behalf of the Plaintiff in Rejoinder:

• Section 124 of the Act was enacted so that the IPAB decides the question of invalidity and the Civil Court trying the suit for infringement passes a decree in the suit in conformity with the final decision of the IPAB. Hence, the Civil Court does not have any jurisdiction to consider the validity of the registration at all and every stage of the suit.

Observations:

• It appears that the expression “if valid” in Section 28 and the words “prima facie evidence of validity” of the trade mark in Section 31 of the 1999 Act permit the Court to consider at the interlocutory stage the Defendant’s plea regarding invalidity of the registration of the plaintiff’s trade mark.

• The Trade Marks Act, 1940 included the words “if valid” and the same were deleted in 1946 in order to take away the powers of a Court in a native State to examine the validity of the registration of the trade mark granted by the Registrar in British India. However, the 1958 Act again introduced the words “if valid” in order to give the back the Court the power to examine the validity of the registration of trade mark.

• If registration of trade mark was conclusive, there was no need to introduce the words ‘if valid’ and ‘prima facie’.

• The object of providing for registration of a trade mark and recognizing the exclusive right of the registered proprietor to use the registered trade mark in order to prevent others from using an identical or deceptively similar trade mark is to obviate the necessity of proving in each and every case the Plaintiff’s title to the mark, its distinctiveness and it’s reputation. However, the said object stands achieved by raising a presumption, and a strong presumption in law, as to the validity of registration of the mark. The burden is therefore cast, and a heavy burden at that, on the Defendant to question the validity of registration.

• Designs Act and Patents Act do not contain provision like Section 28 and 31 of the Trade Marks Act. Therefore, the said acts provide that every ground on which the design/patent may be cancelled/revoked shall be available as a ground of defence. The scheme of the Trade Marks Act is quite different from the Patents Act/Designs Act.

• It is true that the registration of a trade mark is done after following a long procedure under the Trade Marks Act and a party can challenge the registration by way of initiating an opposition proceeding at the stage of advertisement of a mark. This is the reason why there is a strong presumption in favour of the validity of a trade mark.

• While a registered proprietor of a trade mark would ordinarily be entitled to a finding that the trade mark is prima facie valid, the jurisdiction of the Court is not barred from considering the plea of the Defendant at the interlocutory stage.

Held:

“In cases where the registration of trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds a very high threshold of prima facie proof is required. It is, therefore, open to the Court to go into the question of validity of registration of plaintiff’s trade mark for this limited purpose, to arrive at a prima facie finding.”

Other Conclusions:

 The expression ‘if valid’ (Sec. 28) and ‘prima facie’ (Sec. 31) should be given their natural meaning.

 There is a strong presumption in law to the validity of the registration and heavy burden is cast on the defendant to question the validity.

 It is not sufficient for the Defendant to show it has an arguable case on invalidity of trade mark. The prima facie satisfaction of the Court to stay the trial under Section 124 of the Act is not enough to refuse grant of interim injunction. It is is only in exceptional cases, such as registration being ex facie illegal or fraudulent or which shocks the conscience of the Court that the Court will refuse the interim injunction in favour of the registered proprietor of the trade mark.