| CITATION | CS(COMM) 806/2017 & I.A. 14129/2018 |
| DATE OF JUDGMENT | 17th OCTOBER 2023 |
| COURT | HIGH COURT OF DELHI |
| PLAINTIFF | DHARMPAL SATYAPAL LIMITED |
| DEFENDANT | BASANT KUMAR MAKHIJA |
| BENCH | HON’BLE MR. JUSTICE C. HARI SHANKAR |
INTRODUCTION
The case of Dharmal satyapal limited v. basant kumar makhija, 2023 revolves around a critical legal issue of trademark under section 124[1]of trademark act 1999. the case was recently addressed by hon’ble mr justice c. hari shankar in delhi high court of india where he addressed the issue of validity of trademark and also prime facie tenability [to be prime facie view by the court ] and the defendant use the defence under section 30[1][e] of trademark act 1999.
FACTS OF THE CASE
in this mr. Dharmpal satyapal limited was the plantiff who filed a plead in high court of india against Basant kumar makhija who was the defendant of that case. the plaintiff filed the application under section 124 of the trademark act by challenging the validity of defendant registration no. 14746572. In this case section 124[1][b] plays a significant role as it gives right to the plaintiff to challenge the validity of the defendant trademark.
Also plaintiffs only challenge trademark validity when the defendant uses section 30[2][e] of trademark act 1999 which is used by the defendant as a defence to prove that they have acquired registration of this trademark . plaintiff argued that kARMACHAND [panmasala] mark has been taken by defendant from the plaintiff as plaintiff is the market leader of panmasala over a long period of time and also very successful businessman in that field so that defendant tries to create a slight confusion between the original pan masala which is made by plaintiff and the artificial panmasala which is made by defendant to increase their business in market
the defendant very smartly manufactured the artificial pan masala same as original one and sold in the market and also reveals that it is done by him intentionally to create a confusion among public between original and artificial one panmasala
ISSUES RAISED
- whether the registration no. of defendant is invalid or not ?
- Whether the defendant is liable under section 124[1] of trademark act 1999 of infringement of trademark of plaintiff ?
CONTENTIONS OF PLAINTIFF
- The plaintiff raising a plead of invalidity of trademark registration no of defendant ., As mr.anand, council of plaintiff submitted that plead in high court of india by saying there is infringement of their trademark right
- Also argue that defendant reveals that he do so intentionally by manufacturing a similar product of panmasala which is quite similar to original one
- plaintiff clearly made a distinction between original one and artificial one by saying metallic blue background color and also map of the world appearing in front of the pouch , a word PREMIUM appearing in an artificial pouch and having golden borderline flavoured pan masala
CONTENTIONS OF DEFENDANT
- The defendant raised a plead of having valid registration of the trademark of PANMASALA and as a defence to the plaintiff the remedy used by the defendant is under section 30[2][e] which was raised by mr. bakhru, counsel of defendant
- defendant also argued that the plea concerning the invalidity of their registration trademark should be incorporated into original plaint
- and also to support their stance the defendant used the judgement of travellers exchange corporation Ltd. v.celebrities management Pvt.Ltd.[2023] 93 PTC 425
JUDGEMENT
The hon’ble high court of delhi interpreted the provision of section 124[1] which was used by plaintiff and also the section 130[2][e] which was used by the defendant as a defence to trademark invalidity . section 124[1] clearly specify that validity of trademark can be questioned and the plea regarding invalidity of defendant’s registration no 2953829 which was actually wrongly stated . the court on the basis of above noted observation allowed plantiff’s application, Framing an issue of defendant’s invalidity of registration and in light of this ,civil suit for a period of [3]months, enable plaintiff to file rectification. the court also acknowledge that plantiff already taken steps to challenge the invalidity of registration no. by mentioning points in complaint . court specify that the term ‘plead’ simply means defence should be written formally for claim .
Further the court has defined the concept of “PRIME FACIE TENABILLITY” is used by court to determine whether the challenge is arguable or not and the registration of plaintiff and defendant trademark is prime facie tenable [ at a first sight]
furthermost the court reject the argument of defendant of their validity of trademark and finally, the court accepted the plaintiff’s application and proceed their order to frame consideration
CONCLUSION
In conclusion, the case of Dharmpal satyapal limited v. Basant kumar makhija the hon’ble high court of india by analyising all the arguments and defence presented by both plantiff and defendant in their favour of trademark validity or invalidity under section 124 [1] of trademark act 1999. The issue raised by plaintiff that the registration no. of defendant’s was taken wrongly and in favour of plaintiff the high court rejected the arguments presented by defendant’s in his favour and ordered the issue to the consideration.
REFERENCES
This Article is written by Deeya student of Vivekananda Institute of Professional Studies, GGSIPU; Intern at Legal Vidhiya.
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