Can an infringement suit be filed by the owner of a registered trademark against the owner of another registered trademark in India?

First let us look at what is infringement?

 A simple answer would be that an infringement suit would be a statutory remedy available for enforcing the rights of a registered trademark against unlawful and unauthorized use of the said trademark by a third party.

 The question that looms large here is that what if the third party has also a registered mark for same or similar goods or for dissimilar goods with no trade connection? Can an infringement suit be initiated?

 Section 29 of the Trademark Act, 1999 of India specifically states about the varied aspects governing infringement of a registered trademark.

 Section 29(1) specifically provides for

 “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and, in such manner, as to render the use of the mark likely to be taken as being used as a trade mark.”

 From the above definition, an infringement suit can be initiated by the owner of a registered trademark against a person who does not have a registered trademark but is using a trademark identical/deceptively similar to the one which is already registered for similar/identical goods.

 What if the other person has also his mark registered?

 Section 31 of the Trademark Act, 1999 of India states that “Registration is prima facie evidence of validity”. Can an infringement suit be initiated against another registered trademark?

 The answer would be “NO” and a plethora of judgments would be provided that would support the answer. Another answer that would snake its head up is to file a passing off suit. The Trademark Act of India does not contain any provision that specifically defines passing off. Passing off is a tort.

 Courts in India have held that:

“A man is not to sell his goods under the pretence that they are the goods of another man”.

which has continued to be a fundamental principle for tort of passing off. In S. Syed Mohideen v. P. SulochanaBai [2016 2 SCC 683], the Supreme Court of India held that passing off right is a wider remedy than that of infringement.

 The question still remains large – Can an infringement suit be filed against another registered trademark for similar goods or for dissimilar goods?

 To answer the question, a peek into the necessities of infringement is paramount.

 a)   An infringement is a statutory remedy;

 b)   Plaintiff is only required to show deceptive similarity, as there is a presumption of confusion; and

 c)    The registered proprietor or registered user of the trade mark can institute the suit where they actually and voluntarily resides or carries his business or personally work for gain.

 With so many advantages, one would prefer an infringement suit rather than a passing off suit as in a passing off suit, one has also to prove confusion in public and the likelihood of injury to the plaintiff’s goodwill apart from deceptive similarity.

 What is then preventing an owner of a registered trademark to file an infringement suit against another?

 Section 30 2 (e) of the Trademark Act, 1999 states that:

 “A registered trademark is not infringed where the use of a registered trademark, being one of two or more trademarks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trademark given by registration under this Act.”

 Further Section 28 (3) of the Trademark Act of India states that:

 “Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”

 Further again, Section 33 (1) (a) and (b) of the Trademark Act of India states that:

 “Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—

 a)   to apply for a declaration that the registration of the later trade mark is invalid or

b)   to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.”

 The above sections give an opinion that a proprietor of a registered mark cannot file or initiate infringement action against another registered proprietor of an identical or similar mark.

 Section 124(1)(b) of the Trademark Act of India also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered.

 In Abbott Healthcare Pvt. Ltd. Vs. Respondent: Raj Kumar Prasad & Ors. [2014(58) PTC 225 (DEL)] it was observed that a suit for infringement of registered trade mark is maintainable against another registered proprietor of identical or similar trade mark and in such suit, while staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trade mark by the defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant’s mark.

 In Clinique Laboratories LLC and Anr vs Gufic Limited and Anr. [2009 (41) PTC 41], the Delhi High Court observed the following:

 a)   The legislature while further providing for stay of suit in such cases, in sub section (5) expressly provided that such stay would not preclude the court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the court is empowered in such case to pass any interlocutory order.

 b)   Section 31 makes registration of a trademark as only prima-facie evidence of validity thereof while giving the right for rectification before the Registrar. Therefore, intention of the legislature was not that there could be no action for infringement against the owner of the registered mark. Because if the intention was that as long as the registration exists it is valid, without any question of prima-facie or not, the courts would have had to wait for the outcome of the rectification proceedings.

 In Rajnish Aggarwal & Ors. vs. M/s. Anantam [2009 SCC ONLINE DEL 3827], it was observed that a suit for infringement is maintainable in the present case and that this court has got jurisdiction as per the averment made in the plaint after due reference was made to Gufic Limited & Anr.

 In Singer Co. Limited vs Chetan Machine Tools [ILR (2009) 3 DEL 802], the court observed that a suit by the owner of a registered trademark against another registered trademark of the same trademark cannot be declined to be entertained at the threshold because of Section 30 (2) (e) of the Act. Such a suit can lie but may have to be stayed depending upon the defense raised by the defendants that cancellation petition for removal of registered trademark pending before the Registrar of Trademarks.

 THE LAW IS NOW PRETTY WELL-SETTLED. AN OWNER OF A REGISTERED TRADEMARK CAN FILE AN INFRINGEMENT SUIT AGAINST ANOTHER REGISTERED TRADEMARK BUT WILL DEPEND UPON THE DEFENSE RAISED BY THE DEFENDANTS.

 Now, we come to the question of whether an infringement suit is maintainable against another registered trademark with dissimilar goods or goods having no trade connection?

 To answer the same, let us have a look at Section 29 (4) of the Trademark Act, 1999 of India. Section 29 (4) provides for infringement where a mark used for goods or services which are not similar to those which are registered. Section 29 (4) read with Section 31 and with the scheme of Section 124 leads to the conclusion that there can be another.

 In L.R.C. International Limited v. Lilla Edets Sales Company Limited, (1973) R.P.C. 560, it was observed that the plaintiff being in the manufacturing and sale household gloves intended to extend their field of business to toilet tissues which the defendant was manufacturing and an injunction was granted.

 In Flayers’ Trade Mark (Registration) (1965) R.P.C. 363, it was observed that the goods of the plaintiff and that of the opponent were sold through similar channels increasing the likelihood of confusion even if the goods were not of the same description.

 Closer home, in CEAT Tyres of India Ltd. vs. Jai Industrial Services and Anr. [1990 SCC ONLINE DEL 360], it was observed that the absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. The plaintiff has spent considerable amount of monies and has attained wide publicity, so even though for the sake of arguments it is to be assumed that the goods manufactured by the defendants have no trade connection with the good marketed by the plaintiffs, still the common customer who is purchasing the goods is likely to be deceived with the new products of the defendants in all probabilities considering the same as manufactured by the plaintiff because they are being marketed under the same trade mark.

 Therefore, it is now pretty well-settled that:

 a)   The registration of a mark is conditional as far its validity is concerned; and

 b)   An infringement suit can be filed by the owner of a registered trademark against another registered trademark pursuant to the condition that the validity of the registration of the defendant’s trademark has been raised in the plaint by the plaintiff and/or the said validity has been challenged prior to the filing of the infringement suit.