Trademark Infringement by the Registered Proprietor of an Identical or Similar Mark

The right to sue for infringement of his mark is the most significant right conferred upon a registered proprietor by the Trade Marks Act, 1999 (Hereinafter, “TM Act”). However, can one registered proprietor claim the exclusive right to use a trademark against another proprietor who has obtained a registration for an identical or very similar mark? This article discusses all the provisions of the TM Act governing such a case, as well as the different approaches available to an aggrieved proprietor finding himself in this situation.

Relevant Provisions of the Trade Marks Act, 1999

Section 28(3) of the TM Act states that if two registered marks are identical or nearly resemble each other, their registered proprietors will not have any exclusive rights against each other, and both proprietors will be equally entitled to use the mark. The provision goes on to clarify that each proprietor possesses all exclusive rights under the Act against third parties. Further, Section 30(2)(e) of the TM Act states that the use of a registered mark does not infringe upon another registered mark that is identical to or nearly resembles it. Further, registered proprietors and their permitted users have been exempted from the ambit of Section 29, which defines infringement. All sub-sections of Section 29 begin with the words, “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use…” Read together, the effect of all these provisions is that if two persons have registered identical or very similar marks, one of them cannot succeed in an action of infringement against the other. In Eagle Flask Industries Pvt Ltd v Bon Jour International, the High Court of Madras referred to Sections 30(2)(e) and 28(3) of the TM Act, and held that one registered proprietor cannot stop another from using his own registered trademark[1]. Similarly, in Sau Pritikaran Katole v Sau Harsha Ravindra Katole, the Bombay High Court held that if two identical/similar trademarks have been registered by different persons, both registered proprietors can use them simultaneously, and prior/long use by one proprietor is immaterial[2].

At the same time, the TM Act does allow one registered proprietor to file a suit for infringement against the other. According to Section 124, the defendant in a suit for infringement can raise the defence of Section 30(2)(e), i.e., assert that his and the plaintiff’s marks are identical/similar registered trademarks. In response, the plaintiff can allege that the defendant’s mark is invalid. Section 124 also kicks in if the defendant alleges that the plaintiff’s mark is invalidly registered[3]. Once the Section is triggered, two things can happen: 1. If proceedings for rectification of the register are pending in respect to the plaintiff’s or defendant’s mark, the suit for infringement is stayed until the proceedings are disposed of. 2. If no such proceedings are pending, the suit is adjourned, and the concerned party has to apply to the Appellate Board (Now replaced by High Court) for rectification of the register. The suit is stayed once rectification proceedings commence. The suit is revived only when the proceedings have been disposed of.

Obtaining Interim Injunctions

Interim prohibitive injunctions are often prayed for by plaintiffs in trademark infringement suits because they are the most effective method to nip potential infringement in the bud. Removing an infringing product from the market as soon as possible minimises the possibility of consumer confusion and damage to the plaintiff’s brand. Section 124 does empower the Court to grant interlocutory relief while staying an infringement suit.  However, if the TM Act treats two identical/similar registered trademarks equally, can one proprietor obtain an injunction restraining the other from using the mark, even before the validity of the second proprietor’s mark has been determined? This question was answered by the Delhi High Court in Clinique Laboratories LLC v Gufic Ltd, after a comprehensive analysis of the legislative intent behind the TM Act[4].

In Clinique, the High Court did concede that the Act allows the proprietors of identical/similar registered marks to use them simultaneously. However, the Court went on to add that the Act still envisions the possibility of infringement in such a case. This is clear from the inclusions of Section 124 and Section 31. Section 124 provides the procedure to be followed in infringement suits where the plaintiff and defendant both possess identical or similar trademark registrations. Further, Section 31 clarifies that registration is merely prima facie evidence of a mark’s validity, and not conclusive evidence. The Court also highlighted that once the suit was stayed, the rectifications proceedings would be before the Registrar, who has not been empowered to award interim injunctions. Harmoniously construing these different provisions, the Court concluded that plaintiff in such a suit can obtain an interim injunction restraining the defendant from using the trademark, provided he can prima facie establish the invalidity of the defendant’s mark.

Filing a Suit for Passing Off

While the right to sue for infringement is a statutory right conferred upon only registered proprietors by the TM Act, the common law remedy of passing off is available even to owners of unregistered marks[5]. In Abbott Healthcare Pvt Ltd v Raj Kumar Prasad, the Delhi High Court clarified that this remedy is available even to a registered proprietor against another registered proprietor of a similar or identical mark[6].  The Court reasoned that the remedy of passing off has always been available even against registered proprietors. The Court also highlighted that the law of passing off has evolved over a long period of time, and was already in place when trademark law was codified. Therefore, the provisions of the Act have no effect on pre-existing common law.

As laid down in Reckitt & Colman Ltd v Borden Inc, the plaintiff seeking a remedy for passing off must establish three ingredients[7]:

  1. The goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors.
  2. The defendant misrepresents his goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the plaintiff.
  3. The plaintiff has suffered damages because of the misrepresentation.

Conclusion

A registered proprietor can still file an infringement suit against another proprietor who has obtained a registration for an identical or very similar trademark, although it comes with its own procedural complexities. Any such infringement suit would be stayed until the determination of at least one of the marks’ validities. A proprietor can choose to file a rectification application first, and file an infringement suit after the proceedings conclude. However, it would be better to file an infringement suit at the earliest stage, as the Court can grant interim injunctions even while staying the suit. Another potential avenue is filing a suit for passing off. However, proprietors must keep in mind the higher burden of proof they must discharge to succeed in a suit for passing off.

Author: Aasil Singh – a 3rd Year Student at MNLU, Mumbai, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References:

[1] 2011 (48) PTC 327 (Mad).

[2] 2014 (57) PTC 350 (Bom).

[3] The Trade Marks Act, 1999, §124(1)(a).

[4] 2009 (41) PTC 41 (Del).

[5] VK Ahuja, Intellectual Property Rights in India (2nd ed. 2015) Chapter 27(I).

[6] 2014 (58) PTC 225 (Del).

[7] (1990) All E.R. 873.

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