The Delhi High Court observed that an order of Injunction in a suit for infringement against a registered Trademark can be passed only if the Court is satisfied that the defendant’s registration is invalid.

The court dismissed Khadi and Village Industries Commission's application seeking to injunct Girdhar Industries from using Girdhar Industries' registered marks.

In that context, the Bench of Justice C Hari Shankar observed that since the Trade Marks Act treats the very factum of registration as prima facie evidence of validity, the threshold for the plaintiff to contest infringement is very high. The Court specified that the plaint must not only contain cogent pleadings alleging invalidity of the defendant’s registration; it must also contain convincing grounds to satisfy the court, prima facie, that the registration is in fact invalid.

In that context, it was said that, "while, textually, the Trade Marks Act proscribes any infringement suit against a registered trade mark, or an order of injunction restraining the use of a registered trade mark, such a suit would be maintainable, and such an order could be passed, if the Court is satisfied that the defendant’s registration is invalid. The Court is, while arriving at such a decision, to bear in mind Section 31(1) of the Trade Marks Act, which treats the very factum of registration as prima facie evidence of its validity. The threshold that the plaintiff would have to cross in such a case would, therefore, be very high. For this, not only must the plaint contain cogent pleadings alleging invalidity of the defendant’s registration; it must also contain convincing grounds to satisfy the court, prima facie, that the registration is in fact invalid."

Counsel Shwetasree Majumder, along with others, appeared for the plaintiff, while Counsel Shrawan Bansal and Counsel Kankaran Singh appeared for the defendants.

In this case, the plaintiff sought relief against what it perceived to be infringement of its registered trademark KHADI, and passing off of its products, by the defendant through their registered mark GIRDHAR KHADI and BR KHADI.

The Court observed that the presumptuous assertion that the defendant "must have" been aware of the plaintiff’s existing mark registration when it applied for registration in the same class did not suffice to characterize the registration of the defendant's mark as having been obtained in bad faith. In that context, it was said that, "Even if it were, there was no proscription on Defendant 1 applying for the mark GIRDHAR KHADI for soaps and detergents, and contending that there was no likelihood of confusion between GIRDHAR KHADI and KHADI per se. Section 11(1) of the Trade Marks Act does not absolutely proscribe registration of a trade mark which is similar to an earlier trade mark. Registration is proscribed only where, on account of the similarity, there is likelihood of confusion in the public, or of the public presuming an association between the marks. Had the defendant been applying for the registration of the very same mark KHADI for soaps, in full awareness of the existence of an earlier registration of KHADI for soaps held by the plaintiff, it might have been possible to infer bad faith on the part of the defendant. The defendant was applying, however, not for the mark KHADI but for GIRDHAR KHADI. At the highest, it could only be said that the defendant was not justified in presuming the absence of likelihood of confusion, were GIRDHAR KHADI to proceed to registration. The application for registration of the GIRDHAR KHADI mark cannot ipso facto be regarded as tainted by bad faith, merely because the trade mark KHADI already stood registered in the plaintiff’s name in Class 3."

Holding that there was an absence of a prima facie case for injuncting the defendants from using their marks, the Court dismissed the application.

Cause Title: Khadi & Village Industries Commission vs Girdhar Industries & Anr.

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Delhi High CourtJustice C Hari ShankarTrademarks Act

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