Validity of plaintiff's trademark registration can be questioned at interlocutory stage


In Lupin Limited v Johnson & Johnson (Notice of Motion (L) No 2178 of 2012 of Suit (L) No 1842 of 2012), the Full Bench of the Bombay High Court has held that the court can consider the question of the validity of a registered trademark at the interlocutory stage if the registration is ex facie illegal, fraudulent or shocks the conscience of the court.

In an infringement action filed by Lupin Limited based on its mark LUCYNTA, Johnson & Johnson responded that its mark NUCYNTA had been registered internationally prior to Lupin's mark and that a passing-off action was pending against Lupin before the Delhi High Court.

The single judge of the Bombay High Court felt that the earlier stance taken by the court in a number of decisions - namely, that the validity of a plaintiff’s trademark registration cannot be questioned at the interlocutory stage - required reconsideration from the Full Bench of the court in view of the following:

  1. The earlier stance of the court in this respect was in conflict with other decisions of the court;
  2. Registration is only prima facie evidence of a mark's validity;
  3. The Supreme Court had taken the view that, in a passing-off action, an injunction can be granted against the owner of a registered trademark; and
  4. The Delhi High Court had taken a contrary stance in other decisions.

The Full Bench came to the following conclusions:

  1. The expression 'if valid' in Section 28 and the words 'prima facie evidence of the validity' of a trademark in Section 31 of the Trademarks Act 1999 must be given their plain and natural meaning;
  2. There is a heavy burden on the defendant when the latter questions the validity of a trademark;
  3. There is no express or implied bar to the jurisdiction and power of the civil court to consider the validity of a trademark at the interlocutory stage by way of prima facie finding;
  4. The court is not powerless to refuse an injunction if it is likely to lead to inequitable results;
  5. The plaintiff is not required to prove that a trademark registration is not invalid, but it is only in cases where the factum of registration is ex facie illegal, fraudulent or shocks the conscience of the court that the latter may decline to grant relief in favour of the plaintiff;
  6. There was no sound footing for the court to recognise its earlier stance on the issue as a long-standing practice; and
  7. The provisions of the Trademarks Act are not comparable to the provisions of the Designs Act 2000 and the Patent Act 1970 in this respect.

This decision is important as the conflicting positions previously taken by the Bombay High Court and the Delhi High Court appear to now be aligned. The decision constitutes a paradigm shift from the Bombay High Court’s earlier stance, which was used by plaintiffs to their advantage. The single judge had rightly noted that technological advancements and the availability of information and knowledge worldwide cannot be ignored. While this observation was based on the trans-border reputation/awareness in India acquired by a branded drug, technological advancements are also important with regard to the availability of the Indian Trademarks Registry’s data online. When the court's earlier stance was taken, the defendants did not have the option to check the plaintiff’s prosecution history and whether the plaintiff had copied the earlier marks from the Register of Trademarks. The Trademarks Registry’s transparency has given defendants the option to rely on 'prosecution history estoppel'. Hopefully, the decision in the present case will be used in the correct direction.

Adheesh Nargolkar and Shailendra Bhandare, Khaitan & Co, Mumbai

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