Right to seek cancellation of registration of trademark in view of Section 124 of the Trade Marks Act, 1999
The Single Bench of the Delhi High Court in the case of Anubhav Jain vs Satish Kumar Jain & Anr. held that once an infringement suit is filed against the defendant, the defendant does not lose its right to seek cancellation of the plaintiff’s trademark under Section (u/s) 57 of the Trade Marks Act, 1999 (TMA).
The Respondent-Plaintiff had filed a suit of infringement and passing off before the Trial Court, wherein it was alleged that the manner in which the present Petitioner-Defendant was using the mark “JAIN SHIKANJI”, it was infringing the Plaintiff’s registered mark “JAIN SHIKANJI”. The Trial court also passed an interlocutory order of injunction against the Defendant.
Thereafter, the Petitioner filed a petition, u/s 57 & 125 of the TMA before the Delhi High Court, seeking cancellation of one of the trademark registration of the Respondent. The Respondent contested the petition, challenging the maintainability of an application for rectification u/s 57, on the basis of non-fulfilment of the procedure prescribed u/s 124 of the TMA.
The Court held that Section 124 of the TMA has no application, as the Petitioner never raised a plea of invalidity of Respondent 1’s trademark as a ground of defense, before the Trial Court. Even otherwise, Section 124 cannot possibly be read in a manner as to defeat the Petitioner’s independent right to invoke Section 57 of the Trademarks Act, seeking rectification of the register of trademark and cancellation of the trademark of Respondent.
Authors: Paramita Nandy Gupta, Ruchi Singh