Registration only Prima Facie and not Conclusive Evidence of Registration
The grant of registration on a trademark is only prima facie evidence of its validity and can be challenged even after the registration!
Section 31 of Trade Marks Act, 1999 states that:
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
It is evident that the section uses the term 'prima facie', means registration is not conclusive. Further Section 28 (1) of the Act under the head Rights conferred by registration, mentions following:
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
The section uses the term 'if valid' while enumerating the rights of registered proprietor on registration. The addition of said terms in section 31 and 28 makes the intention of the lawmakers clear that registration is not to be considered as the 'conclusive' evidence of validity of the trade mark.
The Delhi High Court in Marico Limited v. Agro Tech Foods Limited ((2010) (43) PTC 39 (Del)) held that as per Section 31 of the Act, registration is only a prima facie evidence of the validity of trademark, the Court can question of validity of the registration while considering the application for grant of injunction. Hence, the onus of proving the invalidity lies on the person who challenges the validity of the mark. The court held that it is in their right to adjudicate upon the validity of trademark in cases where the registration of trademark is ex facie illegal, fraudulent or shocks the conscience of the Court, and threshold to prove such invalidity is indeed high.
Further Section 57 of the act under the head Power to cancel or vary registration and to rectify the register also bases on the fact that registration is not the conclusive proof of validity of trademark. Thus through the section aggrieved is given another opportunity to question the validity of registration and apply for cancelling registered trademark before the Registrar or the IPAB.
Even an infringement suit can be initiated against a registered proprietor, fact of registration per se does not preclude the aggrieved from filing infringement suit against the proprietor of registered trademark however this should be subject to the determination the validity of registration. If the trademark is held to be invalid it will be considered as void ab intio and the infringement suit will proceed for final adjudication however if the trademark is held to be valid the infringement suit shall fail
In a suit for infringement the issue of validity of the registration of a trademark can be raised by the Plaintiff or the Defendant or both under the following conditions as per section 124 of the act:
- When the Defendant in suit for infringement raises a plea that the registration of the Plaintiff’s trademark is invalid.
- When the Plaintiff pleads the invalidity of registration of the Defendant's trademark if the Defendant raises a defence that its mark is registered under section 30(2)(e) the Trade Marks Act, 1999.
If the court thinks that the plea regarding the invalidity of the registration is prima facie maintainable, it may draft an issue regarding the same and adjourn the case for a period of three months from the date of framing of issues in order to enable the concerned parties to apply to the Intellectual Property Appellate Board (“IPAB”) for rectification of the Register.
Here, if the parties file the rectification petition for cancellation of trademark in IPAB within the stipulated time then the suit shall be stayed by the court until the final adjudication in the rectification proceedings. But if the party fails to file rectification within the stipulated time, then the issue of validity of the registration of the trademark shall be deemed to have been abandoned and the infringement suit against registered proprietor will fail, however the court will proceed adjudicate upon th other issued of the suit.