LI Network
Published on: 18 August 2023 at 14:46 IST
The Delhi High Court has clarified that merely possessing trademark registration does not automatically grant the proprietor the right to seek relief against trademark infringement, SUN PHARMA LABORATORIES LTD. v. FINECURE PHARMACEUTICALS LTD& ORS.
Justice C Hari Shankar stated that the entitlement to claim exclusivity over a trademark and to seek relief against infringement, as outlined in Section 28(1) of the Trade Marks Act, hinges upon the validity of the trademark registration.
Justice C Hari Shankar noted, “The words ‘if valid’ in Section 28(1) clearly indicate that the proprietor must establish the validity of the registration to enjoy the benefits of exclusivity or protection against infringement.”
The court emphasized that a plaintiff’s eligibility for relief against trademark infringement must fulfill the requirements set out in Section 28(1), which necessitates showing the validity of the registration.
The court pointed out that the validity of the plaintiff’s trademark registration is unrelated to the act of infringement itself but plays a role in the plaintiff’s right to obtain relief if infringement is proven.
The court clarified that even if infringement is proven, the plaintiff’s right to relief against such infringement is dependent on the validity of the registered trademark. This is the statutory framework established by Sections 28(1) and 29 of the Trade Marks Act.
Justice Shankar further explained that at the interlocutory stage, the plaintiff is only required to establish a prima facie case, and the defendant bears a heavier burden to counter the prima facie evidence.
However, if the defendant presents a strong case that undermines the plaintiff’s prima facie evidence, the court cannot ignore it. In such instances, for the plaintiff to succeed in obtaining relief against infringement under Section 28(1), it is essential to effectively counter the attack on the validity of the trademark registration. Otherwise, relief cannot be granted even if infringement is established.
Justice Shankar made these observations while addressing a suit filed by Sun Pharma Laboratories, alleging infringement of its trademark “PANTOCID.” The court directed the defendant manufacturer to keep separate accounts of earnings from the use of the disputed mark “PANTOPACID.”
Although Sun Pharma failed to establish its entitlement to relief against infringement, the court acknowledged the defendant’s position as a significant market player and ordered them to maintain accounts of earnings from the use of the disputed mark pending the suit’s resolution.
