IPR Law- Suit for
infringement by a registered trade mark owner against a registered trade mark
holder: Conditions-The present dispute was between the registered trade mark of
the plaintiff as well as defendant. It is interesting to note that before
filing the suit the plaintiff i.e. Clinique had filed a cancellation petition
before the Registrar of Trade Marks, India, against the defendant for cancellation
of the defendant’s trade mark CLINIQ. As per the Section 124(1) (ii), of the Indian
Trade Marks Act, 1999 a suit is liable to be stayed till the cancellation
petition is finally decided by the competent authority.
However, under Section
124(5) of the Act, the court has the power to pass interlocutory order
including orders granting interim injunction, keeping of account, appointment
of receiver or attachment of any property.
In this case, the court held
that a suit for infringement of registered trade mark is maintainable against
another registered proprietor of identical or similar trade mark.
It was further held that in
such suit, while staying the suit proceedings pending decision on
rectification/cancellation petition, the court can pass interim injunction
restraining the use of the registered trade mark by the defendant, subject to
the condition that the court is prima facie convinced of invalidity of registration
of the defendant’s trade mark. In this case the court granted an interim
injunction in favour of the plaintiff till the disposal of the cancellation
petition by the competent authority.
