RAJ KUMAR PRASAD & ANR. v. ABBOTT HEALTHCARE PVT.LTD.
In the High Court of Delhi
FAO (OS) No. 281 of 2014
The Question “Whether a registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity ?” came up before consideration before the Division Bench of the High Court.
Plaintiff was registered proprietor of the mark ‘ANAFORTAN’ claiming a user since 1988 through it’s predecessor in interest.
Defendant started selling ‘AMAFORTEN’ since 2012 and had a registration for the same in the year 2011.
Plaintiff filed a suit for permanent injunction restraining infringement of Trade Mark and passing off.
Defendant pleaded that as per Section 28 (3) of the Trade Marks Act, 1999, the Plaintiff cannot sue the Defendant as the Defendant is the registered proprietor of the mark ‘AMAFORTEN’.
The Learned Single Judge relied on Clinique Laboratories LLC and Anr. vs. Gufic Limited and Anr.; 2009(41) PTC 41(Del) and Rajnish Aggarwal & Ors. vs. M/s.Anantam; 2010(43) PTC 442 (Del) and Micolube India Ltd. vs. Maggon Auto Centre & Anr; 2008 (36) PTC 231 (Del) to hold that “even if for arguments sake it is held that a proprietor of a trademark cannot claim infringement of his trademark in view of section 28(3) and read with section 30(2)(e) of the Trade Marks Act an action for passing off would be maintainable. In the present case, the plaintiff has sought to press the contention of passing off stating that the defendant is guilty of passing off”.
Thus on the ground of passing off the Hin’ble Single Judge restricted the Defendant from using the impugned trademark ‘AMAFORTEN’ or any other trademark deceptively similar to the trademark of the plaintiff ‘ANAFORTAN’.
Against the said order the Defendant approached the Hon’ble Division Bench.
The Division Bench after reading Section 28 and 124 of the Trade Marks Act, 1999 held that “Section 124 of the Trademarks Act, 1999 would guide us that it contemplates a suit for infringement of a trademark on the allegation of invalidity of registration of the defendant’s mark and even includes a case where a defendant pleads invalidity in the registration of the plaintiff’s trademark. In such a situation the legislative intent clearly disclosed is, as per sub-Section 5 of Section 124, to stay the suit, to enable either party to take recourse to rectification proceedings before the Registrar of Trademarks, but after considering what interlocutory order needs to be passed”
Thus, impliedly, the Division Bench held that a registered proprietor of a trademark can sue another registered proprietor of a deceptively similar trademark.