Burden On Defendant To Rebut Presumption As To Prima Facie Validity Of Registered Trademark In Suit Against Infringement: Karnataka High Court

The Karnataka High Court has dismissed the appeal filed by a partnership firm challenging trial court's temporary injunction order restraining it from infringing original plaintiff's registered trademark "Hotel Special", in relation to marketing of asafoetida (Hing).

A single judge bench of Justice Anant Ramanath Hegde observed that registration of trademark is granted by the authority after due application of mind. Thus, it held, 

“Once the trade mark is registered, Section 31(1) of the Act of 1999, confers a prima facie validity to the registered trademark. The presumption as to its prima facie validity is of course rebuttable. This being the position, when an interim order is sought to restrain the alleged infringement of a registered trade mark, the burden is on the defendant to rebut the presumption as to the prima facie validity of the trade mark.”

Plaintiff claimed to be exclusively selling asafoetida under the above trademark since 1993 and it was registered in January 2002.

Defendant (appellant herein) on the other hand claimed that it is the prior user of the trademark "SVT Hotel Special" for Asafoetida since 1990. It was contended that the disputed trademark contains generic words and the trade mark in dispute is not distinctive.

The bench on going through the records noted that the Trademarks Act apart from enabling registration of trademarks for protection against unauthorised use, also protects those users who show their use of such mark to be prior in time as against the claim of the registered owner. However, it added, “To take shelter under Section 34 of the Act of 1999, the person who claims prior use of the trade mark should establish that he is the prior user. The burden of proving prior use of the trade mark is on the person (defendant in this case) who sets up a defence of prior use.”

Court noted that the invoices produced by the defendant do not disclose any transaction and thus those documents cannot be considered to accept the defendant's claim for having appointed the distributor. Following which it held “Prima facie at this stage of the proceeding, the defendant's claim that it is the prior user of the trade mark "SVT HOTEL SPECIAL” is not established.”

Defendant had also argued that the expression “Hotel Special” speaks about the intended purpose i.e., the product is sold indicating that it is meant for bulk use in hotels as such, registration of trade mark is invalid.

The bench noted that both words “HOTEL” and “SPECIAL” appear to be non-distinctive, generic. However, their use in combination, as “HOTEL SPECIAL” may sound distinctive of the product in estimation of a normal consumer. It held,

“While considering the application seeking a temporary injunction, if a doubt arises as to whether the trade mark is distinctive or non-distinctive, and on prima facie consideration of the materials, even if two conflicting views appear to be plausible, the Court has to lean in favour of the registered trade mark to hold that the trade mark is prima facie valid.”

Court said unless it is shown that the registration of the trade mark in question is ex-facie impermissible, or that registration is granted in gross violation of the mandate of the provisions of the Act, it has to take a view that the registered trademark is prima facie valid. "In the present case, no such materials are placed to hold that the registration of the trade mark is ex-facie impermissible,” Court said.

Answering the question of whether the trademark only indicates the 'intended purpose' and its use by others is protected under Section 30 of the Act, Court said, “Merely because asafoetida is sold in large jars by itself cannot mean that the expression speaks about intended use without any distinctiveness. Whether the expression “HOTEL SPECIAL” found on the plaintiff's asafoetida tin, meant only use by hoteliers in the estimation of the public as alleged by the defendant is a matter of evidence.”

It added, “Thus, in view of the presumption relating to its prima facie validity, and absence of any materials to show that the registration of the trade mark is ex-facie untenable, this Court at this juncture cannot accept the contention that the trade mark “HOTEL SPECIAL” only speaks about the intended purpose without any distinctive character.”

Accordingly, the Court dismissed the appeal.

Appearance: Senior Advocate Jayakumar S Patil a/w Advocate Priya for Appellant.

Advocate Sivarama Vaidyanathan for C/R.

Citation No: 2024 LiveLaw (Kar) 176

Case Title: S.V.T PRODUCTS AND S.S PANDIAN AND SONS

Case No: MFA NO.2680 OF 2023

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