Can you file for cancellation of a registered trademark of your opponent when no such ground of invalidity was raised in an infringement suit?

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Shubham Budhiraja[1]

 

A filed suit for infringement of trademark against B. The Ld. trial court also allowed the application for interim injunction. B filed appeal before Division Bench.  While appeal was pending, B filed petition u/s 57 for cancellation of A’s trademark. A took an objection that petition is not maintainable because B never raised an issue of non-validity of A’s mark in its WS. THE Hon’ble Delhi High Court rejected the objection and held that the Party can file for cancellation and Rectification of registered trademark u/s 57 even if they haven't raised the issue of invalidity of mark before the trial court u/s 124.[2]

 

(i)                    There is no clause in Section 57 of the Trade Marks Act, which makes it subject to any other provision in the Trade Marks Act. Nor does one find in Section 124 of the Trade Marks Act, any non obstante clause which would accord it pre-eminence over other provisions in the Trade Marks Act. 

 

(ii)                   The right available under Clause (ii) of the second part of Section 124 of the Trademarks Act is not, therefore, in derogation of the right available under Section 57. It is in addition to the said right. It does not, therefore, detract from the right that Section 57 otherwise confers.

 

(iii)                 Just because issue of invalidity is not raised in WS by the defendant it cannot mean that defendant cannot filed an independent petition u/s 57 for cancellation of plaintiff’s mark and rectification of register thereof.


[1] Advocate, Delhi High Court [LLB, ACS, BCOM(H)], +91-9654055315, Budhirajalawchambers@gmail.com

[2] Neutral Citation Number : 2023/DHC/000233, Judgment dated 09/01/2023

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