Opposition of trade mark registration before Registrar not groundless threats u/s 142 of Trademarks Act

Opposition of trade mark registration before Registrar is a quasi judicial proceedings and can not be termed as groundless threats u/s 142 of the Trademarks Act.

ABCAUS Case Law Citation:
ABCAUS 3168 (2019) (10) HC

Important case law relied upon by the parties:
Sidharth Wheels Pvt. Ltd. Vs. Bedrock Ltd. AIR 1988 Del 228
Sachdeva and Sons Industries Pvt. Ltd. Vs. Jain Riceland Pvt. Ltd. MANU/PH/2565/2016
Hindustan Lever Ltd. Vs. Rameshwar Mundia 2009 (39) PTC 570 (Del) (DB),
Metro Tyres Ltd. Vs. Advertising Standards Council of India (2017) 240 DLT 119,
Super Cassette Industries Ltd. Vs. Bathla Cassettes India (P) Ltd. AIR 1994 Del 237
Dolphin Laboratories Pvt. Ltd. Vs. Kaptab Pharmaceuticals AIR 1981 Cal 76
Value Invest Wealth Management (India) Private Limited Vs. B.G. Kishore Kumar 2011 SCC OnLine MP 2397
Intellectual Property Attorneys Association Vs. Union of India 2014 SCC OnLine Del 1912

Trade mark registration opposition before Registrar not groundless threats

In the instant case, the plaintiff had instituted the suit for declaration, permanent injunction and damages in respect of groundless threats under Section 142 of the Trademarks Act, 1999.

The plaintiff pleaded that with its registered office at London, it was the leading professional body in United Kingdom, concerned solely with taxation and its mission is the advancement of public education in taxation. Also that the plaintiff administers and awards two taxation related qualifications, one for international tax professionals and the other qualification for domestic tax practitioners in the United Kingdom.

It was further pleaded that the plaintiff had adopted the trade mark acronym related to domestic qualification 16th back and was in use since then. It was pleaded that the said qualification is one of the most prestigious qualifications in professional tax expertise and is popular among professionals in various countries including India. The plaintiff conducts its examinations in various countries around the world including in India and the plaintiff had sizeable number of students in India.

It was pleaded that the plaintiff had made applications for registration of its trade mark in five classes but the defendant had opposed the application of the plaintiff for registration of the trade mark “on misconceived grounds”.

It was pleaded that there is no opposition to the application for registration in other classes. The plaintiff had also acquired common law rights in the trade mark which was used by the plaintiff in provision of examination services, publication of instructional and teaching material, provision of training conferences and educational courses and various other related and ancillary services and the trade mark is distinctive of the plaintiff and the plaintiff had considerable goodwill and reputation attached thereto.

It was pleaded inter alia that the opposition filed by the defendant with the Registry of Trade Marks to the application of the plaintiff for registration of the trade mark was on “frivolous, misleading, concocted and false grounds, and merely to harass the plaintiff”.

The Hon’ble High Court observed that Section 142 of the Trade Marks Act, 1999, invoking which the suit had been filed provides remedy against the mischievous acts, by means of circulars, advertisements or otherwise, threatening a person with an action or proceeding for infringement of trade marks.

The Hon’ble High Court opined that oppositions filed in statutory proceedings cannot be equated with circulars or advertisements with reference whereto remedy of Section 142 of the Trade Marks Act has been provided.

According to the Hon’ble High Court, the intent of the legislature in drafting Section 142 of the Trade Marks Act appears to be, to provide remedy against a person, who without instituting legal proceedings, metes out threats of legal proceedings. Which is clear from Sub-Section (2) of Section 142, which brings to an end, an action even if initiated under Section 142(1), the moment a proceedings for infringement of trade marks is initiated.

The Hon’ble High Court clarified that the Scheme of the Section 142 is that adjudication of rights asserted should be through legal proceedings and not in public arena. If Section 142 of the Trade Marks Act is read in this manner, once the Registrar of Trade Marks, being a statutory authority empowered to decide the opposition, is seized of the matter, the pleas if any of the plaintiff, of the grounds taken in the opposition being frivolous, groundless and baseless, have  to be adjudicated by the Registrar, and / or in proceedings against the order of the Registrar, and not by way of a separate suit. It is not the pleaded case, that the Registrar of Trade Marks is incompetent to decide the objections.

The Hon’ble High Court rejected the misplaced reliance by the plaintiff on the judgment on a proposition, that pleas contained in a legal / statutory proceedings also fall within the domain of Section 142 of the Trade Marks Act.

The Hon’ble High Court stated that there is no express bar on the Registrar to adjudicate on issues on similarity when an objection is filed. Otherwise also, under Section 11(1), the Registrar is required to adjudicate on similarity of a trade mark, application for registration whereof has been filed, with any earlier trade mark. The power of the Registrar to decide on issues of similarity/deceptive similarity of marks on the oppositions filed before had also been recognized by the Division Bench of the Court.

The Hon’ble High Court noted that it was held that while restraining a person from making unjustified threats, it is not open to the Court to restrain him from taking the matter to a Court of Law and from agitating his rights there; the right to institute a suit was held to be an important and vital right incapable of being interfered with except by a statutory bar. Also, where notice issued by the defendant to the plaintiff asking the plaintiff to cease and desist from infringing the trade mark of the defendant was held to be not a groundless threat within the meaning of Section 142 of the Trade Marks Act, reasoning the said notice to be in aid of intending legal proceedings and further holding that the defendant could not be restrained from exercising its legal rights. Again, it was held that a proceeding under Section 142 of the Trademarks Act or Section 60 of the Copyright Act does not lie against a legal action.

The Hon’ble High Court noted that it had held that the power vested in the Registrar of Trademarks is a quasi judicial power. Hence the proceedings pending before the Registrar of Trademarks i.e. the application of the plaintiff for registration of its trade mark and the opposition of the defendant thereto were quasi judicial proceedings, and such quasi judicial proceedings could not be termed as groundless threats within the meaning of Section 142 of the Trademarks Act.

Accordingly, the Hon’ble High Court dismissed suit holding that the plaint did not disclose any cause of action in law for the suit to be admitted.

Download Full Judgment Click Here >>

read latest abcaus posts

----------- Similar Posts: -----------

Leave a Reply