Proprietor Must Establish 'Validity' Of Trademark Registration U/S 28 To Obtain Relief Against Infringement: Delhi High Court

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

Justice C Hari Shankar added 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, are conditional on the trademark registration being valid.

“The words “if valid”, in Section 28(1), therefore, 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,” the court said.

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

“In other words, the entitlement to an interlocutory injunction against infringement, by the defendants, of the plaintiff’s registered trademark is also dependent on the plaintiff establishing that the registration of its trademark is valid,” the court said.

Furthermore, Justice Shankar observed that validity of plaintiff’s trademark registration has nothing to do with the infringement, but it has everything to do with the plaintiff’s right to obtain relief where such infringement is found to exist.

“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. In other words, even if infringement exists, the plaintiff, as the holder of the registered trademark, cannot be entitled to any relief against such infringement, unless and until the registration of the plaintiff’s trademark is valid. That is, statutorily, the inexorable scheme of Section 28(1) and Section 29 of the Trade Marks Act,” the court said.

It also said that at the interlocutory stage, the plaintiff is only required to make out a prima facie case and the onus on the defendant, to displace the prima facie case, is heavier than usual.

“If, however, the defendants succeeds in setting up a case which is strong enough to displace the prima facie evidence available in favour of the plaintiff in the form of registration of its trademark, the Court cannot ignore it. If, therefore, the defendants are successful in launching a sufficiently vigorous attack to the validity of the plaintiff’s registration, then, in order for the plaintiff to succeed in obtaining relief against infringement, within the meaning of Section 28(1), it is necessary that the plaintiff successfully repels the onslaught. Else, the plaintiff cannot obtain relief against infringement, even if infringement has taken place,” the court said.

Justice Shankar made the observations while dealing with a suit filed by Sun Pharma Laboratories alleging infringement of its trademark PANTOCID, named after its well-known anti-acidity drug, by a pharmaceutical entity manufacturing its product with the mark PANTOPACID using same salt preparation.

The court observed that Sun Pharma failed to establish its entitlement to the relief against the infringement of PANTOCID mark by Finecure Pharmaceuticals Limited.

However, the court directed the defendant manufacturer to maintain a separate account of its earnings and returns from use of the mark PANTOPACID.

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

Justice Shankar noted that Sun Pharma, despite being aware of the use of the PANTOPACID mark since 2009, took no steps till the year 2023 to injunct the same and that the defendant manufacturer grew into a formidable market player in the meantime.

“…the balance of convenience would, in my opinion, clearly not justify bringing the use, by the defendants, of the PANTOPACID mark to a complete halt, at this late stage. Rather, the interests of justice would be subserved if the defendants are directed to maintain accounts of their earnings from use of the impugned PANTOPACID mark, and periodically submit them to the Court, pending disposal of the suit,” the court said.

Case Title: SUN PHARMA LABORATORIES LTD. v. FINECURE PHARMACEUTICALS LTD& ORS.

Citation: 2023 LiveLaw (Del) 697

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