The court may not suo Moto Challenge validity of a registered trademark:
The Delhi High Court vide judgment dated 7 th October 2022 set aside the judgment of the Ld. Single Judge on the ground that a court is not entitled to suo moto challenge the validity of a registered trademark under Section 9(1)(b) of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) unless expressly challenged by the Opposite Party.
I. FACTS OF THE CASE
The appeal was filed by the Appellant against the judgment of the Ld. Single Judge dismissing the application filed against the Respondent on the ground that the Respondent has been infringing the trademark ‘NO TURN’. The Appellant claimed to have registered the said mark in 2011 under Class 20, and has been using the said trademark since 15.01.2008. The Respondent, Kurlon claimed to have used and adopted the said mark since the year 2007 for mattresses as well.
The Respondent took the defense that it was a prior user of the trademark ‘NO TURN’ and that it had been using the same prior in time than the Appellant. It also claimed defense under Section 34 of the Act to claim that a registered trademark proprietor cannot interfere the usage of an identical trademark by any person who has been using the said mark prior to the registration of the trademark.
The Ld. Single Judge noted that the Respondent is not eligible to take the defense under Section 34 of the Act as, even though it was a prior user of the trademark since the year 2007, the usage of the mark was sporadic and not voluminous. However, it dismissed the application under Order 39 Rule 1 and 2 on the ground that the trademark was descriptive in nature, and that the Appellant had not shown any material evidence to the effect that the trademark had acquired distinctiveness on the date of application or on the date of registration.
II. ARGUMENTS BY THE PARTIES
It was the case of the Appellant that the Ld. Single Judge could not deny the interim injunction on the ground of the trademark being descriptive when the same defense has not been taken by the Respondent. It further claimed that since the Court had admitted that the sales and usage of the trademark by the Respondent was intermittent since 2007, injunction should be granted as it the usage of the trademark is bound to cause confusion in the minds of consumers.
The Respondent defended the impugned judgment on the ground that even though it had not taken the objection of the trademark being generic or descriptive, the Court can still examine the issue of whether the trademark of the Appellant was descriptive or not. It relied on the judgment of the Single Judge in Phonepe Pvt. Ltd. v. EZY Services and Anr. (2021 SCC OnLine Del 2635)
III. ANALYSIS OF THE COURT
A. The Respondent cannot approbate and reprobate at the same time:
The Court observed that since KURLON had itself applied for the registration of the trademark ‘NO TURN’ and has contended the same to be a coined word, it cannot take a contradictory plea that the trademark is descriptive, especially when the same has not been objected in the written statement. Therefore, the Court held that since the Respondent had not asserted the trademark ‘NO TURN’ to be a descriptive mark, it is estopped from raising such a plea in order to oppose the injunction sought by the Appellant. The Court further stated that when the party itself is seeking registration of a trademark, it cannot question the trademark for being descriptive and incapable of registration. The Court thereby held that the Respondent is estopped from raising the argument that the trademark ‘NO TURN’ is descriptive in nature.
B. Court need not adjudicate issues not raised by the partie:
The Court observed that the Court is not required to travel beyond the scope of the pleadings and give any finding on matters that are not in issue. The Court held that the Section 9 of the Act which are the absolute grounds of refusal of a trademark does not create any statutory interdictions at the post registration stage. In case the validity of the registration of a trademark is not questioned, as per Section 31 of the Act, it would be assumed to be valid. A court cannot suo moto question the validity of the registration of a trademark if not disputed by the Defendant.
C. Descriptive trademarks are also entitled for protection:
The Court held that it is a trite principle of trademark law that even a descriptive trademark can be registered if before the date of application for registration, it has acquired a distinctive character as a result of its usage for a long period of time.
Going into the merits of the case, the Court also held that the trademark ‘NO TURN’ being used in relation to mattresses, is not prima facie descriptive but rather might imply upon the feature of a mattress which needn’t be turned during its usage. It further held that as the Respondent had not raised the ground about the trademark being descriptive in nature, the same cannot form a ground for rejection of the prayer of the Appellant by the Ld. Single Judge.
IV. CONCLUSION:
The Court held that the Appellant was entitled to the ad interim injunction and the denial of such relief is unjustified. Since the Ld. Single Judge had come to the conclusion that the defense of prior usage by the Respondent did not have merit, it ought to have protected the statutory rights of the Appellant and passed an interim injunction. Accordingly, the Court set aside the judgment of the Ld. Single Judge and restrained the Respondent from using the trademark ‘NO TURN’ till the disposal of the suit.
