Proprietor must establish 'validity' of trademark registration to seek relief against infringement: Delhi High Court

Proprietor must establish 'validity' of trademark registration to seek relief against infringement: Delhi High Court

The contention was between the marks Pantocid and Pantopacid

The Delhi High Court has ruled that proprietorship of registration in a trademark does not ipso facto entitle the proprietor the right to obtain relief against infringement of the mark.

The bench of Justice C Hari Shankar stated that the rights to claim exclusivity over the trademark and to obtain relief against its infringement, as envisaged under Section 28(1) of the Trade Marks Act, 1999, are conditional on the validity of the registration.

The court said, “The words ‘if valid’ in Section 28(1) clearly indicate that in order to enjoy the fruits of registration, whether in the form of a right to exclusivity or protection against infringement, the proprietor of the trademark has necessarily to establish that the registration is valid.”

It added that the entitlement of a plaintiff in a suit to the relief against trademark infringement must abide by the necessary essentials mentioned under Section 28(1). It would require the plaintiff to show that the registration was valid.

Justice Shankar observed, “If infringement exists, then, the right of the plaintiff to obtain relief against such infringement is, by virtue of Section 28(1), conditional upon the registration of the mark being valid. Statutorily, the inexorable scheme of Section 28(1) and Section 29 of the Act.”

The bench explained that at the interlocutory stage, the plaintiff was only required to make out a prima facie case and the onus on the defendant was heavier.

It ruled, “If the defendant succeeds in setting up a case which is strong enough to displace the prima facie evidence available in favor of the plaintiff in the form of registration of its trademark, the court cannot ignore it. It is necessary that the plaintiff successfully repels the onslaught. Else, the plaintiff cannot obtain relief against infringement, even if it has taken place.”

The court was dealing with a suit filed by Sun Pharma Laboratories alleging infringement of its well-known anti-acidity drug trademark Pantocid by Finecure Pharmaceuticals Ltd, which was manufacturing its product with the mark Pantopacid, using the same salt preparation.

The court observed that Sun Pharma failed to establish its entitlement to the relief against the infringement of the Pantocid mark. It, however, directed the defendant manufacturer to maintain a separate account of its earnings and returns from the use of the mark Pantopacid.

The bench ordered, “They shall also place, on affidavit, the figures of the amounts earned, using the said mark, since inception. Periodical statements, on affidavit, shall be filed by the defendant every three months, placing on record their returns from sales of products using the impugned Pantopacid, or any of its variants.”

The judge noted that despite being aware of the use of the Pantopacid mark since 2009, Sun Pharma did not take any steps till 2023. Meanwhile, the defendant grew into a formidable market player.

He added, “The balance of convenience would clearly not justify bringing the use by the defendant of the Pantopacid mark to a complete halt, at this stage. Rather, the interests of justice would be subserved if the defendant is directed to maintain accounts of their earnings from use of the impugned mark, and periodically submit them to the court, pending disposal of the suit.”