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Synopsis

The Delhi High Court has recently emphasized that an order of injunction in a trademark infringement suit against a registered trademark can only be granted if the court is convinced of the invalidity of the defendant's registration.

The court made the observation while dealing with an application filed by the Khadi and Village Industries Commission (KVIC) seeking to injunct Girdhar Industries from using its registered marks.

The bench of Justice C. Hari Shankar held that the Trade Marks Act treats the registration of a trademark as prima facie evidence of its validity.

The single judge bench outlined a stringent standard for plaintiffs to contest infringement, stating that the pleadings must not only allege the invalidity of the defendant's registration but also present convincing grounds prima facie to satisfy the court.

Justice Shankar highlighted the provision of Section 31(1) of the Trade Marks Act, which establishes the presumption of validity based on registration. It stressed that the plaintiff faces a significant hurdle in proving the invalidity of the defendant's registration, necessitating robust pleadings and compelling evidence.

The plaintiff in the present case had sought relief against the alleged infringement of its registered trademark "KHADI" and the passing off of its products by the defendant, who used the registered marks "GIRDHAR KHADI" and "BR KHADI."

The court noted that the mere assumption that the defendant "must have" been aware of the plaintiff's existing mark registration did not suffice to characterize the registration of the defendant's mark as having been obtained in bad faith.

Justice Shankar clarified that the Trade Marks Act does not outright prohibit the registration of a similar mark; instead, it proscribes registration only if there is a likelihood of confusion in the public. He emphasized that the defendant's application for the mark "GIRDHAR KHADI" could not be automatically deemed to be tainted by bad faith simply because the trademark "KHADI" was already registered in the plaintiff's name.

Concluding that there was an absence of a prima facie case for injuncting the defendants from using their marks, the Court dismissed the application.

Case Title: Khadi & Village Industries Commission v. Girdhar Industries & Anr.