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HIGH COURT OF DELHI
FAO (COMM) 122/2024, CM APPLs. 36142/2024 &
36143/2024 M/S VAIDYA RISHI INDIA HEALTH PRIVATE LIMITED & ANR. .....Appellants
Through: Mr. Tarun Sharma & Mr. Tushar Datta, Advocates
Through: Mr. Sumit Nagpal
HON'BLE MR. JUSTICE OM PRAKASH SHUKLA
JUDGMENT
07.08.2025 C. HARI SHANKAR, J.
A Prefatory Note – No infringement action can lie against a registered trade mark
1. A Division Bench of this Court commenced its judgment, in Raj Kumar Prasad v Abbott Healthcare (P) Ltd[1], thus: “The question: Whether the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity keeps on arising in this Court. The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the (2014) 60 PTC 51 defendant can be restrained from marketing goods under the offending trademark. The question has arisen once again in the suit filed by Abbott Healthcare Pvt. Ltd. and the antagonists are Raj Kumar Prasad and Alicon Pharmaceuticals Pvt. Ltd.” The above question came to be answered, by the Division Bench, in the affirmative.
2. Raj Kumar Prasad has been followed by another Division Bench of this Court in Corza International v Future Bath Products (P) Ltd[2]. We have not come across any other judgment, of any Division Bench of this Court, or of the Supreme Court, which holds that an action for infringement can be instituted against a registered trade mark. However, post Raj Kumar Prasad, some Single Benches of this Court have, following it, entertained infringement actions even against registered trade marks, and even injuncted their use. At the same time, there are other judgments, also of learned Single Judges, which have, albeit without noticing Raj Kumar Prasad, held that no infringement action can lie against a registered trade mark.
3. A coordinate Division Bench of this Court, through an opinion rendered by one of us (C. Hari Shankar, J.), has, in Abros Sports International (P) Ltd v Ashish Bansal[3] doubted the correctness of the view expressed in Raj Kumar Prasad and has, therefore, referred the issue of whether an infringement suit would lie against a registered trade mark to a larger Bench. The outcome of the reference is still awaited.
4. The issue again crops up for consideration in this appeal. The order under challenge, rendered by the learned District Judge (Commercial Court), West[4] in an application by the respondent, as the plaintiff before her in CS (Comm) 741/2023[5], follows Abbott Health Care Pvt Ltd v Raj Kumar Prasad[6] (the judgment of the learned Single Judge which was affirmed in Raj Kumar Prasad) and injuncts the appellant-defendant from using its registered trade mark, in an infringement action instituted by the respondent.
5. We have, post Abros, studied the legal position further, and find that the view, expressed in Raj Kumar Prasad, that an infringement suit lies against the proprietor of a registered trade mark, and that the use of such registered trade mark can be injuncted following a finding of infringement, is contrary to the law declared by the Supreme Court, albeit later in point of time, in S. Syed Mohideen v P. Sulochana Bai[7], which clearly holds that no infringement action can lie against a registered trade mark. Raj Kumar Prasad can, therefore, no longer be regarded as good law.
6. The impugned judgment cannot, therefore, sustain, as it injuncts the appellant from using its registered trade mark on the ground that it infringes the registered trade mark of the respondent. Facts
7. The respondent instituted CS (Comm) 741/2023 against the “the learned Commercial Court” hereinafter Vaidrishi Laboratories & anr v Vaidya Rishi India Health Pvt Ltd & others (2014) 58 PTC 225 appellant, alleging that, by use of the mark VAIDYA RISHI, the appellant was infringing the following registrations held by the respondent under the Trade Marks Act, 1999, with effect from 31 December 2018, for all of which the respondent claimed user from 1 January 1972: S No Trademark Class 1 VAIDRISHI (Word mark) 5 2 ARSHKALP (Device Mark) 5 3 VAIDRISHI (Word Mark) 35 4 VAIDRISHI (Word Mark) 42
8. The appellant also holds registrations, under the Trade Marks Act, of the device mark VAIDYA RISHI, in Classes 29, 30, 31, 32 and 35.
9. The respondent’s case was that the use, by the appellant, of the mark VAIDYA RISHI infringed the registrations held by the respondent in the ARSHKALP device mark and the VAIDRISHI word mark. In so far as the allegation of infringement vis-à-vis the ARSHKALP device mark is concerned, the respondent’s case was that the word “VAIDRISHI” constituted a dominant part of the ARSHKALP device mark and that, therefore, by adopting a deceptively similar mark VAIDYA RISHI, the appellant was also infringing the ARSHKALP device mark of the respondent.
10. Nonetheless, the injunction that was sought against the appellant was only against the use of the mark VAIDYA RISHI.
11. The learned Commercial Court was, therefore, concerned with whether a case for injunction against use by the appellant of the mark VAIDYA RISHI was made out on the basis of the registrations held by the respondent in the VAIDRISHI wordmark and the ARSHKALP device mark.
12. By the impugned judgment, the learned Commercial Court has granted an injunction in favour of the respondent and against the appellant in the following terms: “18. Therefore, the plaintiffs prima facie established that they are a much prior user of the trademark VAIDR1SHI and that the trademark of defendant nos.l and 2 is phonetically similar to the trademark of the plaintiffs. Plaintiffs also prima facie established that the defendant nos.l and 2 have dishonestly adopted the trademark VAIDYARISHI to take advantage of the reputation and goodwill of the plaintiffs’ trademark. Since, goods of the plaintiffs and that of defendant nos. 1 and 2 are near identical in nature,plaintiffs also prima facie establish that there is every likelihood that goods of defendant nos.l and 2 are likely to cause confusion among the consumers that the goods of the defendant nos. 1 and 2 are that of the plaintiffs. For the reasons stated above, the plaintiffs have also established that the balance of convenience lie in favour of the plaintiffs and against the defendant nos.l and 2 and if no interim injunction is granted, the plaintiffs will suffer irreparable harm and injury. Accordingly, application of plaintiff under Order XXXIX Rules 1 and 2 is thus allowed and the defendant nos.l and 2 or anyone acting on their behalf are hereby restrained from manufacturing, selling, offering for sale, advertising, reproducing, promoting, displaying, or directly or indirectly dealing in aforementioned trademarks of plaintiffs or any other trade marks deceptively similar to the Plaintiffs’ trademark as a part of a trademark, trade name, domain name, or in any manner including on websites, social media accounts, and on third-party websites and platforms till further order.
19. Since, defendant no.3 is the registrar of impugned domain name https://vaidyarishiindia.in/ which is similar to that of plaintiffs’, Defendant No. 3 is directed to suspend and lock the domain name https://vaidyarishiindia.in/ registered by Defendant Nos. 1 and 2 or by anyone on their behalf till further order. Defendant no.3 is further directed to reveal the Registrant details, including payment details of purchase and sale details, along with complete Shopper ID (identification number assigned to a Registrant) information, of the impugned domain names https://vaidyarishiindia.in/ and any other domain names which is similar to that of plaintiffs’.
13. The impugned order does not examine the aspect of passing off at all. There is no finding with respect to the goodwill held by the respondent in the asserted marks, so as to make out a case of passing off. The order has been passed solely on the ground of infringement. Rival Contentions
14. At the very outset, Mr. Tarun Sharma, learned counsel for the appellant, submits that his client is willing to subscribe to an undertaking that he will use the VAIDYA RISHI mark only for the goods or services covered by Classes 29, 30, 31, 32 and 35, for which the mark stands registered in the appellant’s favour, and will not use the mark VAIDYA RISHI for any goods or services which are not covered by the aforesaid registrations, and which are covered by the registrations held by the respondent.
15. The offer does not, however, appeal to the respondent, who, through Mr. Sumit Nagpal, learned Counsel, prays that the injunction as granted by the learned Commercial Court be upheld in its entirety. He submits that the case is plainly one of infringement, as the respondent has priority of registration as well as of use of the VAIDRISHI mark over the appellant’s VAIDYA RISHI mark and that, therefore, an injunction must follow. Analysis
16. Which gives rise, as already noticed, to the issue of whether the appellant can, on the basis of a finding of infringement, be restrained from using its registered trade mark, in the Classes in which it is registered.
17. Raj Kumar Prasad, as we have already noticed, holds that a registered proprietor of a trade mark can, following a finding of infringement, be injuncted from using the registered trade mark, even for the goods or services in respect of which it stands registered.
18. Sections 28(1), 28(3), 29 and 30(2)(e) of the Trade Marks Act 18.[1] Section 29(1) to (4) “Infringement” is defined in Section 298 of the Trade Marks Act. The
29. Infringement of registered trade marks. – (1) 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. (2) 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 because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) 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— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and very definition of infringement in the various sub-sections of Section 29 envisages infringement only by a person who is not a registered proprietor of the mark or a person using the mark as a permissive user. Each sub-section starts with the words “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use …” As such, per definition, there can be no infringement by a registered user of a mark in the classes in which it is registered in his favour. 18.[2] Section 30(2)(e) The same conclusion flows from Section 30(2)(e)9 of the Trade Marks Act. Section 30(2), in its various clauses, sets out circumstances, which would not amount to infringement. Sub-clause (e) excludes, from the ambit of “infringement”, the use of a trade mark by its registered proprietor, as the very registration of the trade mark confers absolute right to use it. As such, even by operation of Section 30(2)(e), use of a registered trade mark by its proprietor can never be infringement. 18.[3] Section 28(1) and (3)
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (2) A registered trade mark is not infringed where – ***** (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. 18.3.[1] Sections 28(1)10 and (3)11 further unequivocally proscribe any injunction against the holder of a registered trademark, from using the mark in the classes in respect of which it is registered. 18.3.[2] Section 28 sets out the consequences of registration. Section 28(1) grants the holder of a registered trademark exclusive right to use the mark in the classes in which it is registered in his favour. Any injunction against such use would, therefore, be in the teeth of Section 28(1) of the Trade Marks Act. 18.3.[3] The position is made even clearer by Section 28(3) which deals with a situation in which two persons may be registered proprietors of marks, which are identical or deceptively similar to each other. Section 28(3) clearly holds that in such cases neither person would be allowed to interfere with the exclusive right of the other person to use the mark, though each of them would have a right of injunction against a third party, who may not be a registered proprietor of the mark. 18.[4] The import of these provisions is clear and unmistakable. No infringement can be alleged by use, of a proprietor of a registered trademark, of the mark in the class in which it is registered. Neither
28. Rights conferred by registration. – (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (3) 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. can there be any injunction against the use by a registered trademark of the mark in which it is registered.
19. The decision in Raj Kumar Prasad – Contrary to Syed Mohideen 19.[1] Even in such a forbidding statutory scenario, a Division Bench of this Court, in Raj Kumar Prasad, held that an infringement suit would lie at the instance of a proprietor of a registered trademark against another registered proprietor of identical or deceptively similar mark, and injunction could be granted in such cases. We may note that the learned Commercial Court has, in the impugned order relied, inter alia, on the decision in Raj Kumar Prasad to hold that the present infringement suit would be maintainable and an injunction could be passed against the use by the appellant of its registered trademark even in the classes in which it is registered. 19.[2] In arriving at the aforesaid conclusion, Raj Kumar Prasad relied on clause (5) of Section 12412 of the Trade Marks Act.
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. – (1) Where in any suit for infringement of a trade mark— (a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the 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 High Court for rectification of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade 19.[3] A Division Bench of this Court has, in Abros Sports International (P) Ltd. v Ashish Bansal authored by one of us (C. Hari Shankar, J.) opined that the decision in Raj Kumar Prasad may not constitute correct law and has, therefore, referred the matter to a Larger Bench. The decision of the Larger Bench is still awaited. 19.[4] It may not be necessary to await the decision of the Larger Bench as we find that, after Raj Kumar Prasad, the Supreme Court has, in Syed Mohideen, enunciated the legal position differently. Syed Mohideen would, therefore, prevail, over Raj Kumar Prasad and Corza. This Court, while rendering Corza, was apparently not made aware of Syed Mohideen. 19.[5] Before adverting to Syed Mohideen, we may examine what exactly has been held in Raj Kumar Prasad, of which the following passes contain the ratio decidendi:
the stay of the suit. to sue the other, and each being empowered to sue other persons.
16. But what does Section 124 of the Trademarks Act, 1999 say? And in what manner does it affect the rights conferred under Section 28?
17. The guiding star being the principle of law: every attempt has to be made, as long as the language of a statute permits, to give effect to every phrase and sentence used by the legislature, and if there emerges an apparent conflict, the duty of the Court would be to iron out the creases and interpret the provisions harmoniously so that the provisions are given effect to.
18. Sub-Section 1 of 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 plaintiffs 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. Sub-Section 5 reads: “The stay of a suit for the infringement of a trademark under this Section shall not preclude the Court for making any interlocutory order including any order granting an injunction direction account to be kept, appointing a receiver or attaching any property, during the period of the stay of the suit” 19.[6] It can be seen, from the afore-extracted passages from Raj Kumar Prasad, that the Division Bench has proceeded solely on the basis of Section 124 (5) of the Trade Marks Act. The view of the Division Bench is apparently that, if there can be no injunction on the ground of infringement, against the proprietor of a registered trademark, it might render Section 124 (5) of the Act negated. 19.[7] In arriving at its conclusion, the Division Bench has proceeded on its understanding of Section 124 (5), as set out in para 18 of the judgment, extracted supra. 19.[8] With great respect to the learned authors of Raj Kumar Prasad, whom we hold in the highest esteem, we are of the opinion that the decision in Raj Kumar Prasad is contrary to the express wordings of Section 124, as well as to the judgment of the Supreme Court in Syed Mohideen. We may reproduce, for ready reference, the following paragraphs from S. Syed Mohideen:
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) 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.
26. A bare reading of this provision demonstrates the following rights given to the registered proprietor of the trade mark:
(i) Exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered.
(ii) To obtain relief in respect of infringement of trade mark in the manner provided by this Act.
27. Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other. It, thus, postulates a situation where same or similar trade mark can be registered in favour of more than one person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act.
28. However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and Section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as the High Court have granted the injunction in favour of the respondent on the basis of prior user as well as on the ground that the trade mark of the appellant, even if it is registered, would cause deception in the mind of the public at large and the appellant is trying to encash upon, exploit and ride upon on the goodwill of the respondent herein. Therefore, the issue to be determined is as to whether in such a scenario, the provisions of Section 27(2) would still be available even when the appellant is having registration of the trade mark of which he is using.
29. After considering the entire matter in the light of the various provisions of the Act and the scheme, our answer to the aforesaid question would be in the affirmative. Our reasons for arriving at this conclusion are the following. *****
30.3. Section 28(3) of the Act provides that the rights of two registered proprietors of identical or nearly resembling trade marks shall not be enforced against each other. However, they shall be same against the third parties. Section 28(3) merely provides that there shall be no rights of one registered proprietor vis-à-vis another but only for the purpose of registration. The said provision 28(3) nowhere comments about the rights of passing off which shall remain unaffected due to overriding effect of Section 27(2) of the Act and thus the rights emanating from the common law shall remain undisturbed by the enactment of Section 28(3) which clearly states that the rights of one registered proprietor shall not be enforced against the another person.
30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in this Act shall entitle the registered proprietor or registered user to interfere with the rights of prior user. Conjoint reading of Sections 34, 27 and 28 would show that the rights of registration are subject to Section 34 which can be seen from the opening words of Section 28 of the Act which states “Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor….” and also the opening words of Section 34 which states “Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere….” Thus, the scheme of the Act is such where rights of prior user are recognised superior than that of the registration and even the registered proprietor cannot disturb/interfere with the rights of prior user. The overall effect of collective reading of the provisions of the Act is that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act. This proposition has been discussed in extenso in N.R. Dongre v Whirlpool Corpn.13 wherein the Division Bench of the Delhi High Court recognised that the registration is not an indefeasible right and the same is subject to rights of prior user. The said decision of Whirlpool was further affirmed by the Supreme Court of India in N.R. Dongre v Whirlpool Corpn14.
30.5. The above were the reasonings from the provisions arising from the plain reading of the Act which gives clear indication that the rights of prior user are superior than that of registration and are unaffected by the registration rights under the Act.” (Emphasis supplied) 19.[9] Thus, the Supreme Court, in S. Syed Mohideen, has clearly held that there can be no infringement action against the proprietor of a registered trademark and that no injunction can be granted against use, by the proprietor of a registered trademark, of the mark in the class in which it is registered in his favour, on the ground of infringement.
19.10 A passing off action, we may note, would lie even against the proprietor of a registered trademark, as the right to sue against passing off arises under common law, and is not a statutory tort. Syed Mohideen, therefore, clarifies that the view that there can be no injunction against the use of a registered trade mark is the position as N.R. Dongre v Whirlpool Corpn, AIR 1995 Del 300 it emerges from Section 28(3) of the Trade Marks Act. That would not, however, inhibit the Court from granting injunction against the use of a registered trade mark, by its proprietor, on the ground of passing off. Section 27(2)15 of the Trademarks Act expressly saves passing off actions.
19.11 However, as we have already noted, the impugned order has not been passed on the ground of passing off, but on the ground of infringement. Mr. Nagpal, learned counsel for the respondent is also candid in his submission that his case is one of infringement against the appellant.
19.12 Insofar as infringement is concerned, we are bound by the law laid down in Syed Mohideen. To reiterate, the Supreme Court has clearly held, in the afore-extracted passages, that no infringement action will lie at the instance of one registered proprietor of a trademark against another registered proprietor of a trademark, seeking an injunction against the use, by the latter, of the registered trademark, in the class(es) in which it is registered. The only exception, as Syed Mohideen itself holds, is in cases of passing off. No injunction on the ground of infringement can therefore, be granted.
19.13 It is true that Syed Mohideen does not notice Section 124 of the Trade Marks Act. That, however, would not make any difference, for more than one reason. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
19.14 Firstly, Section 124 does not, in express terms, state that an infringement suit would lie against a registered trade mark, or that the use of a registered trade mark could be injuncted on the ground of infringement. That is, at best, an inference which Raj Kumar Prasad draws, from Section 124(5). Thus, there is no reason to assume that, even if Section 124 were to be noticed, the decision in Syed Mohideen would be any different.
19.15 Secondly, we, as a hierarchically lower judicial authority vis-àvis the Supreme Court, are bound, by Articles 141 of the Constitution of India, by the law declared by the Supreme Court. It is not within our remit to wish away the declaration of law by the Supreme Court on the ground that a particular provision was not noticed by it. In effect, that would amount to our holding the judgment of the Supreme Court in Syed Mohideen to be per incuriam, which, as the decision in South Central Railway Employees Cooperative Credit Society Employees Union v B. Yashodabai16 categorically rules, no High Court can venture to hold.
19.16 Ergo, in view of Syed Mohideen, we find ourselves inhibited from following either Raj Kumar Prasad or Corza.
19.17 Section 124(5) inapplicable even on facts 19.17.[1] That apart, even if we advert to Section 124(5) of the Trade Marks Act, that provision applies only in a situation in which the suit has suffered the rigour of the earlier provisions of Section 124.
Section 124 envisages a situation in which the plaintiff challenges the validity of the defendant’s trademark or vice versa. Mr. Nagpal submits that the plaintiff has in fact pleaded, in its plaint, that the registrations held by the defendant are liable to be removed from the register of trademarks and intends to move a rectification petition. The fact remains, however, that no such rectification petition has been filed till date. 19.17.[2] Even if the plaintiff were to plead invalidity of the defendant’s trademark, while a suit for infringement is pending, the consequences are expressly envisaged in Section 124 itself. In such a case, if the defendant raises a Section 30(2)(e) defence, asserting the right to use its mark as its registered proprietor, and the plaintiff challenges the validity of the defendant’s registration, the Court hearing the suit has first to satisfy itself that the challenge to the validity of the defendant’s registration is prima facie tenable. If the Court is satisfied that the challenge is prima facie tenable, it has to frame an issue in that regard and has to adjourn the suit by three months in order to enable the plaintiff to file a rectification action. If the plaintiff files a rectification application within three months and informs the suit Court accordingly, Section 124(2) ordains that the trial of the suit would stand stayed till the rectification is decided. It is only in these circumstances that Section 124(5) applies, and clarifies that the stay of the suit would not inhibit the court from passing any injunction order. 19.17.[3] In the present case, neither has the suit Court examined that prima facie tenability of the respondent’s challenge to the validity of the appellant’s registration, nor has any issue been framed in that regard, nor has the suit been adjourned by three months in order to enable a rectification to be filed, nor has any order staying the proceedings in the suit being passed. As such, the circumstances in which Section 124 applies, has not even arisen in the present case. 19.17.[4] Even if, therefore, Raj Kumar Prasad were to be treated as correct law, it would not apply, as Section 124(5) does not call for application in the facts of the present case.
19.18 That said, we reiterate that, in our view, after Syed Mohideen, we are, even in law, unable to follow Raj Kumar Prasad.
20. In view of the aforesaid, even without entering into the aspect of infringement on merits, we are of the opinion that the very action for infringement would not lie. The learned Commercial Court, was, therefore, in our view, in error in injuncting the appellant from using its registered trade mark on the ground of infringement.
21. The appellant has undertaken to use the mark VAIDYA RISHI only in respect of the Classes in which it is registered in the appellant’s favour and not qua any goods or services which are not covered by the said classes but may be covered by the registration held by the respondent. That, in our view, is an eminently fair stance, and sufficiently safeguards the respondent.
22. In the light of the view we have taken, we are not required to enter any further into the merits of the matter. Conclusion
23. For the aforesaid reasons, we are of the opinion that the learned Commercial Court was in error in granting an injunction in the respondent’s favour and against the appellant on the ground of infringement. The impugned order is, accordingly, quashed and set aside.
24. The use by the appellant of the VAIDYA RISHI mark would, however, be restricted to the goods and services covered by the registrations held by the appellant in Classes 29, 30, 31, 32 and 35. The appellant would not use the VAIDYA RISHI mark for any goods or services in case not covered by the said Classes but which are covered by the registrations held by the respondent for the mark VAIDRISHI.
25. The appeal stands disposed of in the aforesaid terms.
C. HARI SHANKAR, J.
OM PRAKASH SHUKLA, J. AUGUST 7, 2025