Court’s decision to suo motu examine registered trademark

In a recent judgment passed on 11 September 2023, Delhi High Court encountered a distinctive and unparalleled scenario in the matter of Nadeem Majid Oomerbhoy vs Sh. Gautam Tank. This trademark conflict was related to the use of the wordmark “SUPER POSTMAN” for edible groundnut oil.

The plaintiff filed a suit alleging that the defendants were infringing upon his registered trademark “POSTMAN” by using the similar mark “SUPER POSTMAN”. What complicated the case was the fact that the defendants had applied for the registration of the “SUPER POSTMAN” mark in 2004, and that the application had remained pending for a very long time before registration was finally granted on 13 February 2023.

Upon realising that the defendant had obtained registration for the “SUPER POSTMAN” wordmark, the plaintiff then filed an application to challenge the validity of this registration. Additionally, the plaintiff sought to adjourn the ongoing suit to initiate rectification proceedings against the defendants’ trademark.

However, the plaintiff failed to adhere to the specific legal procedures outlined in section 124(1)(b) of the Trade Marks Act, 1999. Section 124(1) of the Trade Marks Act applies to cases where there is a pending lawsuit alleging trademark infringement. Section 124(1)(b) outlines the following procedure that must be followed in such cases:

• The defendant raises a defence under section 30(2)(e), asserting the validity of their registered trademark.
• If the plaintiff challenges the validity of the defendant’s trademark, the court will examine whether the challenge is tenable.
• If the court finds that the challenge is tenable, it will frame an issue and adjourn the suit for three months, allowing the plaintiff to file rectification proceedings against the defendant’s trademark.

In this case, the defendants did not raise a section 30(2)(e) defence in their written statement. As a result of this, the plaintiff’s application under section 124 was dismissed by the court. In the suit, the plaintiff sought an injunction against the defendants for alleged trademark infringement and, at the same time, the defendants possessed a valid trademark registration.

To grant the relief, the court would need to declare the defendants’ registration invalid, which appeared to conflict with sections 29(1) and 30(2)(e) of the Trade Marks Act.

Sections 29(1) and 30(2)(e) explicitly state that an infringement can only be committed by a person who is not the holder of a registered trademark, and the use of a registered trademark, even if it is identical to an existing trademark, does not constitute an infringement. So, any finding of an infringement against the holder of a registered trademark would be legally untenable.

The court’s finding: Delhi High Court rejected the plaintiff’s argument that it could proceed to find infringement without considering the defendants’ registered trademark. The court also emphasised that it could not consciously pass an illegal order, as it would go against the statutory provisions.

Furthermore, section 28(3) of the Trade Marks Act stipulates that the holder of a registered trademark cannot claim exclusivity against another registered trademark holder with an identical or deceptively similar trademark. This provision reinforces that the plaintiff’s claim of infringement is subject to the exception in section 28(3).

Recognising the need to balance the interests of both parties in the case, the court explored an alternative course of action. It relied on section 57(4) of the Trade Marks Act, which empowers the court to cancel or vary a trademark registration and rectify the register, even without the parties’ application.

In light of this provision, Delhi High Court decided to examine the validity of the defendants’ trademark registration using its suo motu (action taken by a court of its own accord, without any request by the parties involved) powers under section 57(4).

This decision by the court was made to ensure that the plaintiff had a fair opportunity to contest the registration’s validity, considering the pivotal role of the registration in the infringement claim.

The Deli High Court decision highlights the complexity of trademark disputes, particularly when they involve registered trademarks, and when one of the registrations was obtained many years later without any such information being mentioned in the pleadings.

Manisha Singh and Omesh Puri are partners at LexOrbis.