Section 124 of the Trademarks Act 1999 plays a crucial role in determination of prima facie invalidity of trademark registration. This article explores the legal intricacies of Section 124 and delves into the question of whether the contents of a replication can be considered in adjudicating an application under this section.

Section 124 of the Trademarks Act 1999:
Section 124 of the Trademarks Act 1999 provides the framework for addressing the issue of trademark invalidity raised by a plaintiff in response to a defendant's assertion of rights based on the registration of their trademark. When a defendant raises the Defense of Section 30(2)(e) of the Trademarks Act 1999, they are essentially claiming the right to use their registered mark as a defense against charges of infringement and injunction.

The Legal Conundrum:
A critical question arises regarding the procedural steps a plaintiff must take to invoke Section 124 when a defendant utilizes Section 30(2)(e) as their defense strategy. The key debate revolves around whether a plaintiff can raise the issue of invalidity in the replication or if they are required to amend the initial plaint.

The Defendant's Argument:
In a specific case before the Hon'ble High Court of Delhi, the defendant argued that the plea concerning the invalidity of their registered trademark should be incorporated into the original plaint. They contended that the averments contained in the replication could not constitute "pleadings" regarding the registration's invalidity. To support their stance, the defendant relied on the judgment of Travellers Exchange Corporation Ltd. v. Celebrities Management Pvt. Ltd. (2023) 93 PTC 425.

The Court's Interpretation:
The Hon'ble High Court of Delhi interpreted the provision of Section 124(1)(b) differently in response to this argument of defendant. "The court emphasized that a Section 30(2)(e) defense involves the defendant's assertion of rights derived from the registration of their trademark. The latter half of Section 124(1)(b) specifies that the plaintiff can plead the invalidity of the defendant's trademark registration. It became evident that the provision was designed to address a challenge by the plaintiff only when the defendant asserts rights stemming from the registration."

Consequently, the court ruled that the plaintiff's occasion to plead the invalidity of the defendant's trademark, as per Section 124(1)(b), arises exclusively when the defendant raises a Section 30(2)(e) defense. This interpretation allowed the Hon'ble High Court of Delhi to consider the contents of the replication and enabled the plaintiff to proceed with their application under Section 124 of the Trademarks Act 1999 by framing an additional issue of the invalidity of the defendant's registered trademark.

The Concluding Note:
The case before the Hon'ble High Court of Delhi underscores the significance of a meticulous interpretation of trademark laws, especially in situations where a defendant raises the Defense of Section 30(2)(e). Section 124 of the Trademarks Act 1999 clarifies that a plaintiff can indeed raise the issue of trademark invalidity in the replication, provided that the defendant has asserted rights deriving from the registration.

The Case Law Discussed:
Case Title: Dharampal Satpal Limited Vs Basant Kumar Makhija
Date of Judgement/Order:17/10/2023
Case No. CS(COMM) 806/2017
Neutral Citation No: 2023:DHC:7667
Name of Hon'ble Court: High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.

Disclaimer:
Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539