Trademark

Determination of prima facie validity of registered mark


The Delhi High Court once again examined the prima facie validity of a registered mark in its judgment in Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd. The Court had to decide plaintiff’s application for interlocutory injunction qua use of word “Krishna” (which is part of its registered mark) in the label mark “Parul’s Lord Krishna” of the defendant. A similar examination of registered mark was earlier carried out in Marico Ltd v. Agro Tech Foods Ltd which we covered here.
[Note – Analysis of this case is limited to the issue of determination of prima facie validity of registered mark.]
Arguments
The plaintiff claimed exclusivity over its registered mark “Krishna” under class 29 (Registration nos. 599070 & 783679). Citing prior continuous use of the mark and the substantial demand for the goods, the plaintiff argued that the mark became “well known” within the meaning of Section 2 (zg) of the Trade Marks Act, 1999.  Since registration of trade mark is prima facie evidence of its validity, injunction was contended as an entitlement against the defendant as a matter of right. Further, it was contended that the use of impugned mark exemplified mala fide intent for seeking the benefit of goodwill and reputation inalienably connected with plaintiff’s marks. The defendant, on the other hand, contended that the name “Krishna” is quite common in the Indian context. Since the word “Krishna” is preceded by words “Parul’s Lord”, the defendant characterized its mark as a “qualified mark”. Further, it was forcefully contended that the registration in favour of a party would not preclude the Court from examining its prima facie validity.
Judgment
Justice Rajiv Shakhdar noted that the Court, at the final stage, would have to determine the secondary distinctiveness of the mark. Contradicting himself (in the same paragraph 14.5), at this interim stage, he concluded that the name “Krishna” which is as common as “John” used in the West, could not achieve secondary distinctiveness. Thus, prima facie, the trademark “Krishna” ought not to have been registered. Further, the mark “Parul’s Lord Krishna” prima facie did not elicit dishonesty / mala fide. The Court modified its earlier interim order to the extent that the defendant could use “Parul’s Lord Krishna” provided the prefixes “Parul’s” and “Lord” had the same font size and prominence as that of “Krishna”.
In essence, the submission – having obtained registration, the plaintiff could seek injunction as a matter of right – was categorically negated. It was held that the Court could examine prima facie validity of registration – citing S. 9 (Absolute grounds for refusal of registration), S. 30 (Limits on effect of registered trade mark) and S. 35 (Saving for use of name, address or description of goods or services) of Trademarks Act and the judgment in Marico Ltd v. Agro Tech Foods Ltd. 169 (2010) DLT 325.
I intend to question the rationale behind this approach:
Firstly, the judgment completely overlooked S. 31 of the Act. As per S.31, registration is prima facie evidence of its validity. In other words, the statute has expressly prescribed a certain degree of evidentiary standard for registration. One of the tests for exercising discretion in granting interim injunction is to determine whether the plaintiff has a prima facie case or not. In the light of prescribed statutory standard attached to registration viz., registration being prima facie evidence of its validity, a yet another determination of prima facie validity of mark is ultra vires the statute.
Secondly, the rationale in Marico Ltd v. Agro Tech Foods Ltd. which was relied upon by the instant judgment is dubious – specific to the context of S.124(5) of the statute.  Interpreting S. 124(5) broadly, it was held that the Court can examine the prima facie validity of a registered mark at an interim stage. I intend to disagree with this interpretation.
As per S.124(5), the stay of suit for the infringement of a trade mark shall not preclude the court from making any interlocutory order (including any order granting an injunction) during the period of the stay of the suit. In the light of S. 31, S. 124(5) cannot be given an overriding effect. If S. 124(5) is given an overly broad interpretation as in this judgment, the validity of a registered mark can be examined at an interim stage which is essentially a prima facie examination. This renders S. 31 virtually otiose since registration is prima facie evidence of its validity. This goes against the well-settled principle of statutory interpretation viz., not to adopt an interpretation which renders a provision otiose. Therefore, applying the principles of harmonious interpretation, the power to grant “any interlocutory order” should not include an order pertaining to the determination of prima facie validity of the mark.
The impugned mark may be a weak mark. It may deserve removal from the Register. In fact, the judgment noted that the impugned mark “Krishna” has been the subject of several registrations under the same class – some even preceding plaintiff’s registration (paragraph 14.3)!! Many may be wondering how the mark found its way to the Register. But it is an altogether different matter from the legal perspective. Rule of law demands abidance by a standard prescribed by law. Thus, at an interim stage, the prima facie validity of a registered mark should not be examined except when provided by the statute – for instance, S. 124 (1)(b)(ii) provides for examination of prima face validity of the mark for adjournment of case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
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Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

14 comments.

  1. AvatarAnonymous

    Well … Ur free to interpret the judgment but i must disagree that you have very narrowly interpreted the Judgment on a single issue in a very subjective manner. The court has discussed the use of word KRISHNA as general expression, descriptive word, publici juris specially in dairy industry. Further the court has relied not only on marico but also on other DB judgments which are in conformity on the same issue.

    Even in Rhizome Case – The DB held weak marks not capable of distinctiveness when adopted by a trader cannot be expected to be protected by court.

    For a Mark like KRISHNA – Secondary meaning has to be proved for a long period of time while which has to be uninterrupted and cannot only proved at trial as also held in Marico Judgment. The said judgment has discussed Section 9,11,12, 28, 29, 30 and 32 of the Trademarks Act, 1999.

    As regards marico the same has also been confirmed by the Supreme Court then i guess the Hon’ble Judges cant be wrong after discussing the law at length.

    “Just one question your argument that “KRISHNA” can be a monoply of a single entity is a quite dangerous proposition as then everyone in India would have to change names.”

    In the end i would suggest that the judgment be interpreted in entirety discussing the full gamit of law and not on subjective lines.

    Reply
  2. AvatarMathews P. George

    Dear Anonymous,

    Thx for your comments. Pls find below my responses:

    Firstly, I used an objective standard in my analysis i.e settled principle of statutory interpretation.

    Secondly, I admit that I have analysed only one issue i.e determination of prima facie validity of a mark. That was my intention.

    Thirdly, I admit that the Court relied on various cases other than Marico. But those cases dealt with other aspects. For instance, the Rhizome case which you mentioned was referred while discussing “passing off” (paragraph 17).

    Fourthly, as far as reliance on cases and provisions are concerned (specific to the context of determining prima facie validity of mark), paragraph 15 conforms to what I have stated in the post.

    Fifthly, I didnt know that SC confirmed the Marico judgment. Though I tried, I couldnt locate it. Would you mind giving the indiankanoon link?

    Sixthly, as to clarify, i was not analysing the strength / weakness of the mark.

    regards
    Mathews.

    Reply
  3. AvatarKarthik

    Hi,
    Nice article. But I slightly beg to differ from your Opinion. I would kindly request your read Section 124(5) of the TM Act, wherein it has been specifically stated that a suit for infringement can be stayed by the Court if the defendant contests the validity of the TM of the Plaintiff. The Said Section further goes on to say that The Court is entitled to make “any” interlocutory order. So I dont think that the Court acted ultra vires of its powers.

    Please let me know if my point of view is right / wrong.

    Regards,
    Karthik

    Reply
  4. AvatarKarthik

    Well, I would also like to rely upon one more judgment of the Delhi HC, link to which is provided below.

    http://indiankanoon.org/doc/435709/

    Considering how the TMR grants registration to descriptive marks (I saw a publication for “ONLINE” for internet services) I feel that Court shud excerise its power granted u/s/ 124(5) and I would not say that its ultravires of the Act.

    P.S. I didnt read abt section 124(5) in my first reading and hence the suggestion

    Reply
  5. AvatarAnonymous

    Dear Mathews,

    I appreciate your candid admissions. But in the nut shell the court had a limited issue to decide can “KRISHNA” be exclusive proptiteory right of any one in the cultural context of our country.

    In my opinion as an indian i cant state that a god revereed across the whole world can be an exxlusive right of anyone specially a name like Krishna infested in ethos of millions.

    I must appreciate the Honble Court has been bold enough to pass such an order to settle the law on this issue.

    As far as marico is concerned SLP against the DB judgment has been dismissed as devoid of merit. So it is a settled law now.

    @ Karthik – I agree wid i

    Reply
  6. AvatarMathews P. George

    Dear Karthik,
    Thx for giving this pertinent judgment. I will study this and get back.

    @Anonymous: As I stated earlier, i was not analysing the strength of the mark. Of course, the mark is weak. I was addressing a different point in the post.

    regards
    Mathews.

    Reply
  7. AvatarMathews P. George

    @Anonymous:

    SLP comes under the discretionary jurisdiction of SC. Just because the SLP has been dismissed, doesnt mean that the SC has confirmed the rationale in the HC judgment.

    regards
    Mathews.

    Reply
  8. AvatarAnonymous

    I wonder if any one has taken care of the position that the defendant in this suit himself had filed the application for the registration of the same mark for which the suit has been filed and injuction sought. In view of this does it lie in the mouth of the defendant to say that the plaitniff cannot have exclusive right to the user of the name KRISHNA. This I am saying in the light of the judgment in the case of Automatic Electric Limited vs R.K. Dhawan & Anr. 1999 (19) PTC 81 (Del.)relied by the plaintiff in para 11 of the judgment Besides the judgement in the case of Shriram (2009 (41) PTC 772 (Del.)has though been discussed but has been brushed aside merely by stating that the facts in the present case are different (See para 14.4). The facts in differnt caes are seldomnly identical

    Reply
  9. AvatarAnonymous

    Dear Mathews,

    I guess once the SC has agreed with the rationale of Division Bench in Marico that is why they have dismissed the appeal against judgment of division bench as devoid of merit. Hence the said judgment has achieved finality and is the correct law.

    Reply
  10. AvatarAnonymous

    Your blog reads that the suit was filed on the basis of a registered Trade Mark No: 597519 which included pictorial depiction of KRISHNA. Please note the same is factually wrong. The said registration has not been renewed by the plaintiff and has now been removed. The suit in fact has been filed on the basis of two other registrations namely 599070 and 783679 (see para 4.1 and 4.2 of the judgment) which pertain to the word KRISHNA.

    Besides it is noteworthy to mention that the defendant in this case has been using the trade mark MURLI (para 10.1), another name of the same God KRISHNA and had even filed application (under No: 625486 dated 18/4/1994) for registration which was pending under opposition. Perhaps the defendant was not satisfied with his own mark MURLI which is claimed to have been used since 1/4/1993.

    Reply
  11. AvatarAnonymous

    our blog reads that the suit was filed on the basis of a registered Trade Mark No: 597519 which included pictorial depiction of KRISHNA. Please note the same is factually wrong. The said registration has not been renewed by the plaintiff and has now been removed. The suit in fact has been filed on the basis of two other registrations namely 599070 and 783679 (see para 4.1 and 4.2 of the judgment) which pertain to the word KRISHNA.

    Besides it is noteworthy to mention that the defendant in this case has been using the trade mark MURLI (para 10.1), another name of the same God KRISHNA and had even filed application (under No: 625486 dated 18/4/1994) for registration which was pending under opposition. Perhaps the defendant was not satisfied with his own mark MURLI which is claimed to have been used since 1/4/1993.

    Reply
  12. AvatarAnonymous

    Dear Anonymous,

    It was just a critical analysis of the Judgment in which everyone has a point of view.

    While it is noteworthy that the plaintiff itself has conceded that there is no passing off as pointed in (Para 14.1) with respect to label of impugned product.

    With respect to the word KRISHNA the plaintiff has a chance to prove a secondary meaning at trial by leading evidence for a non distinctive mark and its a clear law in Rhizome case, weak marks cannot be protected.

    As far as murli is concerned, it is a synoname of Lord Krishna, while the dispute was in relation to word KRISHNA which cannot have any secondary meaning as even a small child or an illiterate indian would tell you what KRISHNA means.

    Kindly get ur facts and historical knowledge right…..Moreover “Murli” means a FLUTE and KRISHNA was known as MURLIDHAR coz he use to play flute so at best Murli can be a descriptive mark but KRISHNA per se cannot have any secondary meaning and is direct refernce to the Holy God.

    Then i guess it is the plaintiff who at its peril registered such a mark and then expected protection which is absurd in Indian context.

    Logically speaking in Indian heartland there are millions who not only use god names as trade marks or trade names but also as personal names. Your contention if accepted will read to unique situation in India whereby millions of ppl with god names like KRISHNA would have to change name because the plaintiff claims monoply which is laughable….

    Reply
  13. AvatarAnonymous

    Dear Anonymous @7.29 pm

    It seems that you have not read the judgment in full. That is the reason that you have stated as follows:

    “While it is noteworthy that the plaintiff itself has conceded that there is no passing off as pointed in (Para 14.1) with respect to label of impugned product.”

    In fact what you have stated is in para 14 and not in para 14.1. Please read para 2 for this purpose. It does not speak of impugned label but the new label. For your convenience the relevant portion from the judgment is reproduced here below:

    “During the course of proceedings, the defendant placed before me an alternate representation to the one which is currently being used by the defendant. The label which the defendant proposes to use, as against the one which it is currently using, was filed formally on 02.11.2010. This filing was preceded by an order dated 01.10.2010 when, the counsels representing the defendant had placed before me during the course of hearing the changes they proposed in their trade mark label for consideration of the plaintiff. At this hearing it was contended by the counsels appearing for the defendant that they had instructions to argue the application for vacation of the ad interim order dated 25.01.2010 on the basis of the suggested trade mark label.”

    This makes it clear that when the defendant is caught infringing the mark and has been restrained by the court in ex parte order, now comes up with the new label and argues the case on the basis of the new label. A strange situation. In this manner, every defendant who has been restrained by an ex parte order can come with a new label and say that forget about the impugned label, now I have decided to start the new label and now decide the case on the basis of this new label and kindly permit me to use this. If the court permits, the court becomes the license giving authority, bypassing all other authorities and procedures.
    You have agreed that MURLI is Synonym of Lord Krishna. If that be so, then why should you take the shelter of Descriptiveness. Besides, would you say that MURLI can be used by anyone (which as per blog is being used by defendant since 1/4/1993)? If any other person or say plaintiff himself uses MURLI, would the defendant have any cause of action against that person or the plaintiff?

    Would your opinion be same if the defendant was using MURLIDHAR or MURLIWALA. These are not descriptive words but other names of same God. Besides there are several other names of same God like MOHAN, MADHUSUDAN, GOPAL and many more. I know these marks command a very valuable goodwill and reputation in the market for GHEE and relate to particular business houses Do you mean to say that these marks for GHEE can be used by any one? And why confine to just one God namely KRISHNA. Would it apply to other Gods names as well like SHREE RAM?

    You have not stated about the judgment of Mukesh Khadaria Trading as Aggarwal Udyog vs DCM Sriram Consolidated Ltd.2009 (41) PTC 772 (Del.). There is protection to the name of God SHREE RAM.

    Reply

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