The esteemed Delhi High Court has truly upheld its reputation as one of India’s most proactive High Courts in Intellectual Property Law decisions. With a rich history of precedents, it often cites its own judgments in IP-related disputes. In a recent decision, Jaquar and Company Private Limited versus Ashirvad Pipes Private Limited[1] exemplifies this trend. The dispute centered on the infringement and passing off of the trademark ‘ARTIZE’ registered by Jaquar, countered by the alleged mark ‘ARTISTRY’ registered by Ashirvad, both used for similar products like faucets, sanitary fittings, taps, and washers. While Ashirvad was found to have infringed, Justice C. Hari Shankar, presiding as the Single Bench, raised pivotal legal questions deserving thorough scrutiny. One such question that was debated was whether an action for infringement could be pursued upon a registered mark. This inquiry led the Court to examine the apparent overlap between Sections 28[2] and 124[3] of the Trademarks Act, 1999.
Counsel for the Defendant, Mr. Chander Lall, contended that since both marks were registered, a suit for infringement could not be initiated. He argued that Jaquar could only proceed with an action for passing off, as there was no statutory bar to do so, given the common law rights’ significance, a distinction echoed by the Supreme Court in S. Syed Mohideen versus P. Sulochna Bai[4].In this post, I intend to clarify the final position taken by the Hon’ble High Court to the above-stated question by drawing a comparison between Sections 28 and 124 as the Court did and by citing precedents that answer the same, albeit indirectly in the two judgements of the Delhi High Court in Raj Kumar Prasad and Another versus Abbott Healthcare (P) Ltd[5]. and Corza International and Others versus Future Bath Products Pvt. Ltd[6].
Scrutinizing Section 28 vis-à-vis Section 124 of the Trademarks Act, 1999
Before traversing into the seeming overlaps, we need to scrutinize the specific provisions of the Sections ad verbatim. Section 28(1) sets up an exclusive right vested with the registered proprietors of a trademark to use the same in relation to the goods and services for which it is registered and vests in the proprietors the exclusive right to sue for infringement against all other entities from using the mark. The question that arises isthat what if there were two or more registered proprietors for marks that are either identical or that nearly resemble each other. Section 28 again comes to the rescue and delivers under sub-section (3) that in instances when two or more registered proprietors exist for trademarks that are either identical or similar, in such instance, both the registered proprietors have exclusive rights over their marks to be protected from infringement from all the persons who are not the registered proprietors of such marks.
A plain reading of Section 28 would suggest that a registered proprietor cannot be sued for infringement of his mark since his rights are vested in the marks. However, can no such suit be entertained? The counsel for Ashirvad Pipes had argued that the present suit was not tenable because Rectification Proceedings had already been initiated. The counsel for Ashirvad Pipes took help of sub-clause (i)of clause (b) of sub-section (1) of Section 124 that declares valiantly that if prior rectification proceedings have been initiated, the court trying the suit shall stay the suit until the decision of the Registrar. Even if that were not the case and no rectification proceedings had been initiated, but the court was satisfied of the invalidity of the registration of either mark, it shall first stay the suit for three months from the date of the framing of the issues to give the other party the chance to initiate rectification proceedings. Only when such chance has been given by the Court and the party makes no such application for rectification can the Court continue to decide on the suit for infringement.
The question then arises, how did the Court allow the suit for infringement when there were rectification proceedings yet to be decided by the Registrar?
The Decisions of the Delhi High Court in Raj Kumar Prasad v. Abbott Healthcare and Corza International v. Future Bath Products
Although Raj Kumar Prasad sets the precedent, yet it is impossible not to mention Corza International as the same is a Division Bench judgement to which this specific bench of Justice C. Hari Shankar found itself bound. The precise question that Raj Kumar Prasad answered was whether the registered proprietor could sue another registered proprietor for infringement. In this case, the Defendant had not initiated rectification proceedings against the mark ‘AMAFORTEN’ at the time of the filing of the suit but only after it. Relying on the principles laid down by the Hon’ble Supreme Court in Wander Ltd. v. Antox India P. Ltd.[7], the Bench by way of analogy gave a higher precedence to Section 124 over Section 28 of the Act. The Court allowed the suit for infringement along with the rectification proceedings by harmoniously constructing the two seemingly contradictory provisions. Section 124 does not contemplate that no suit can be initiated. It was the Defendant’s argument in the present case that since rectification proceedings had been initiated before the filing of the suit, it made no logical sense to the present suit for infringement before the decision of the Registrar.
This is precisely what the Bench in Corza International reiterated when citing Raj Kumar Prasad. The crux of Corza International being that an injunction for a registered trademark that falls under Section 28 can only be soughtwhen invalidity of registration is pleaded. Only however if the Court finds prima facie that the registration of the mark is invalid can the other party plead infringement.
Findings of the Court
In the tussle between the two parties over the marks ‘ARTIZE’ and ‘ARTISTRY’, the decision was in favour of Jaquar. However, in order to arrive at this conclusion, the Court had to look past the argument contended by the counsel for theDefendants questioning the validity of the suit on the ground of pending rectification proceedings. The Court read through the principles of Raj Kumar Prasad from which flows the decision of Corza International. It suggests that Section 28 is not to be read in isolation and has to be read in conjunction with Section 124. Section 124 does not debar the initiation of a suit for infringement while still pleading that the registration of the defendant’s mark is invalid. What Section 124 does is vest powers with the court to stay the suit to enable the Plaintiff to institute rectification proceedings if not done already.
Specific paragraphs cited in Corza International were cited to encompass every aspect of Section 28 and 124. Ultimately, what is of importance is that sometimes provisions must be read into harmoniously to keep legislative intent in check. Simply, as Justice Oliver Wendall Holmes has stated, “The task of construction is not to find meanings; it is to find meanings that fit harmoniously into the larger system of law”.
Conclusion
In conclusion, it’s evident that the argument against the validity of a suit based solely on the registration of a mark has lost its significance. While registered proprietors do hold exclusive rights, this doesn’t prevent others from challenging registration validity through rectification proceedings. Simultaneously, avenues like suits for passing off remain open. Courts consistently prioritize the examination of registration validity over infringement suits, as emphasized by Justice C. Hari Shankar in the present case. Despite pending rectification proceedings, the initiation of an infringement suit is not barred, although it may not be entertained immediately due to Section 124 of the Trademarks Act, 1999.
[1](2024) SCC OnLine Del 2281
[2] Trademarks Act, 1999, § 28, No.47, Acts of Parliament, 1999 (India)
[3]Trademarks Act, 1999, § 124, No.47, Acts of Parliament, 1999 (India)
[4] (2016) 2 SCC 683
[5](2014) 60 PTC 51 (Del)
[6] (2023) SCC OnlineDel 153
[7] 1990 Supp SCC 727
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