The Delhi High Court has referred key questions regarding trademark infringement to a larger bench for clarity.
In a significant development, the Delhi High Court has referred critical legal questions about trademark infringement to a larger bench. The main issue revolves around whether a suit for infringement can be filed against a proprietor of a registered trademark. This referral followed a disagreement between two benches of the Court on the interpretation of the law.
The Court has framed the following questions for the larger bench:
- Can a suit for infringement be filed against the owner of a registered trademark, for using their own registered trademark?
- If such a suit is permissible, can the Court issue an interim injunction to prevent the defendant from using the allegedly infringing registered trademark?
- If an injunction is allowed, should it be granted only after completing specific legal steps, including:
- The defendant raising a defense under Section 30(2)(e) of the Trade Marks Act.
- The plaintiff challenging the validity of the defendant’s trademark.
- The Court confirming that the challenge is valid.
- Framing of relevant issues by the Court.
- Allowing three months for the defendant to initiate rectification proceedings.
- Proceeding with the suit only after the rectification outcome.
- Alternatively, is it enough for the plaintiff to simply allege that the defendant's trademark is invalid to seek an injunction?
Read also:- No Objections U/S 47 Of CPC Can Be Moved By Judgment Debtor Against Execution Of Award U/S 36 Of A&C
This reference to a larger bench arose because of differing views between two benches of the Delhi High Court. The disagreement was between the current bench of Justices C. Hari Shankar and Ajay Digpaul and an earlier decision in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014).
In the Raj Kumar case, it was held that a suit for infringement could be filed against the proprietor of a registered trademark, and an injunction against the use of such a trademark could also be granted.
However, in the present case, the bench of Justices Shankar and Digpaul held a different view. They stated:
"There can be no infringement by a registered trademark. An unregistered trademark alone can infringe. Use of a registered trademark, for the goods or services in respect of which it is registered, can never be infringing in nature."
Read also:- Delhi High Court Slams Abuse of Writ Jurisdiction for Fraudulent GST Claims; ₹1 Lakh Cost Imposed
The judges emphasized that granting a right to seek relief against another registered proprietor under Section 28(1) of the Trade Marks Act would contradict Sections 29(1) to (4), 28(1), 28(3), and 30(2)(e) of the Act.
Case Background
The present case involves Abros Sports International Pvt. Ltd., which filed an appeal seeking an injunction against the use of the trademark 'NEBROS', registered in the name of the respondent. Abros argued that 'NEBROS' was deceptively similar to its own shoe brand, 'ABROS'.
However, due to the difference in judicial opinion on whether such a suit could lie against a registered trademark holder, the bench decided to refer the matter to a larger bench for a clear and authoritative decision.
Appearance: Mr. Ranjan Narula, Mr. Shakti Priyan Nair and Mr. Parth Bajaj, Advs. for Appellant; Mr. Sanchay Mehrotra, Adv for Respondents
Case title: Abros Sports International Pvt. Ltd. v. Ashish Bansal And Ors
Case no.: FAO(OS) (COMM) 140/2024
