IPAB has exclusive jurisdiction to consider and decide upon trademark registration invalidity #indianlaws

Delhi High Court has held that IPAB has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity – applying Section 47 and 57 of the Act- in the context of an infringement suit based on such registered trademark. Access to IPAB is not dependent on the civil court’s prima facie assessment of tenability of a plea of invalidity of trademark registration. In other words, Section 124 of the Trademarks Act does not control the choice of a litigant to seek rectification of a registered trademark.

Full Bench of the Delhi High Court in the instant reference petition had to determine on a judicial conflict on the question whether prior permission of the Court is necessary under Section 124(1)(b)(ii) of the Trade Marks Act, 1999 (“the Act”) for rectification of a registered trademark, during the pendency of a suit.

The first view taken was that proceedings for rectification of the defendant’s mark cannot be initiated without the prima facie satisfaction of the plea by the Court and that the suit cannot be adjourned or stayed in terms of Section 124(1)(b)(ii) of the Act to await the outcome of the rectification proceedings initiated by the plaintiff before the Intellectual Property Appellate Board (hereafter “IPAB”) – if the procedure outlined therein is not followed.

On the other hand the other view was that such proceedings (for rectification before the IPAB) can be initiated without the permission of the court trying the infringement suit and the consequence of not obtaining permission is only that the applicant cannot seek stay of suit.

It was observed that IPAB is solely charged with the duty of examining the plea of invalidity of a registered trademark. Its decision, and that of no other court or body, can lead to the striking off or retention of a mark on the register. It oversees the decisions of the Registrar and has appellate powers in all such matters. The grounds for invalidating a mark, or deciding a plea of invalidity, are spelt out in Sections 47, 57 and some other related provisions; the IPAB is the only judicial forum charged with the jurisdiction of deciding upon those issues; any decision on those issues, on the merits, by a court or another body (other than Registrar who too has concurrent primary jurisdiction, except in the manner provided by Section 125) would result in a decision that is coram non judice. Conversely, therefore, except while considering whether to grant interlocutory relief, or while considering whether to adjourn the proceedings by three months to enable the concerned party to move the IPAB under sections 47/57, the plea of invalidity would be prima facie evaluated by a court under Section 124(1)(b)(ii). These provisions bars exercise of jurisdiction of civil courts on the issue of examination of merits of a plea of invalidity of a trademark. No civil court can go into that issue under any circumstance at all-except on a prima facie level.

The Delhi High Court accordingly held that

  1. IPAB has exclusive jurisdiction to consider and decide upon the merits of a plea of trademark registration invalidity – applying Section 47 and 57 of the Act- in the context of an infringement suit based on such registered trademark. Access to IPAB is not dependent on the civil court’s prima facie assessment of tenability of a plea of invalidity of trademark registration. In other words, Section 124 of the Trademarks Act does not control the choice of a litigant to seek rectification of a registered trademark.
  2. The two situations whereby the infringement action is stayed, are when the rectification proceedings are instituted before the filing of the suit (Section 124 (1) (i)) and after the plea of invalidity is held to be prima facie tenable under Section 124 (1) (ii)) to enable the party urging invalidity to approach IPAB.
  3. Where the civil court based on its prima facie assessment states the the invalidity plea is not tenable or where the litigant does not approach the IPAB within the time granted (i.e when the court holds the plea to be prima facie tenable) the only consequence is deemed abandonment of the invalidity defense in the infringement suit. However, access to IPAB to invoke its exclusive jurisdiction to test the invalidity of a trademark registration is not precluded or barred in any manner whatsoever.
  4. The decision in Astrazeneca UK Ltd. and Anr. v. Orchid Chemicals and Pharmceuticals Ltd. 2007 (34) PTC 469 (DB) (Del) and all other judgments which hold that the plea of rectification can be raised by a party to an infringement suit, only if the court trying the suit, rules it to be prima facie tenable and that if such finding is not recorded, the party cannot avail the remedy of rectification of a registered trademark, was accordingly overruled.

 

[Data Infosys Ltd. And Ors. Vs. Infosys Technologies Ltd.]

(Delhi HC, 05.02.2016) – FAO (OS) 403/2012