Sunday, June 13, 2010

Trademarks Act, 1999

Appeal filed to challenge the order against dismissal of application for an ad interim injunction under O. 39, Rules. 1 and 2 of CPC - Application for ad interim injunction was filed for perpetual injunction restraining defendants from manufacturing or selling locks and hardware items under offending trademark "KEY MANN"
A reading of Section 28(3) WITH Section 30(1)(d) shows that the proprietor of a registered trademark cannot file an infringement action against a proprietor of an identical or a similar trademark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trademarks and bar action of infringement against each other. Section 27(2) ON THE OTHER HAND DEALS WITH THE PASSING OFF ACTION. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trademark under the Act would be irrelevant in an action for passing off. Registration of a trademark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark
We say so because in the absence of any statutory provision making a search essential, the practice of making a search or the breach thereof would be insufficient to support a finding that the party concerned has not come to the Court with clean hands. The learned Single Judge has also found that the plaintiff had not referred to the opposition of the defendants to the plaintiff's application for registration. That observation assumes that the opposition had been notified to the plaintiff. The material placed on record, however, does not support any such assumption. In the circumstances, the question mark put by the learned Single Judge on the bona fides of the plaintiff may remain angry area for future debate but may not be sufficient on the available material to support the vacation of the interim order.

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