In a recent judgement of Madras High Court, they answered an interesting question of law in the case of M Murali Vs Sri Krishna Sweets Private Ltd. and anr. The matter was the civil revision Petition arising out of an order passed by the district court in a  suit for infringement of a Trademark.

Cort said that there could be two situations as regards a particular case a sper section 124 of Trademarks Act, 1999.

  1. Prior to the institution of suit for infringement, that opposite party may have already moved an withdrawal application of the applied Trademark.
  2. Post Institution of Suit, the application for removal of the applied Trademark could be filed before the Intellectual Property Appellate Board (IPAB).

In both the above situations, in order to avoid any conflicting decisions between the fora, Trail court regulates the issue of deciding the validity of the Trademark to the IPAB and decide on the suit as the outcome before the IPAB has a bearing on the suit. Until such time the proceedings before the trial court are stayed.

The legal issue in this case was whether an additional issue regarding the validity of the mark ought to be framed by the Trail court in the circumstances of the instant case, where there was no plea questioning the validity of the plaintiff’s registered trademark in its pleading.

In the given case, written statements filed by the defender do not state any plea that was challenging the validity of the plaintiff’s registered trademark. Hence, the defendant was not entitled to have an issue framed in relation to the validity of the Trademark.

It was held in the PM diesel case that anyone will not directly approach the statutory authorities for the rectification of Trademark, they can only file an appeal against the order of the Trial court.

Analysis of Sri Krishna Sweets Judgement

The said judgement of the supreme court was delivered in November, 2017. The main issue that arose before court was that prior to the PM diesel judgement, the instant suit for the infringement of Trademark was filed and the Defendant had also filed his written statement.

Although the pleadings were completed in the suit, the defendant failed to question the validity of the Plaintiff’s mark by filing a rectification petition before the IPAB under section 47 and 57 of the Trademarks Act.

Based on the pleadings on record, the trial court had framed an issue on December 21, 2017, and no issue on the validity of the plaintiff’s mark was framed. The same was not challenged by the Defendant at that point in time.

The defendant thereafter about 11 months from the pronouncement of the PM diesel case, filed an application for framing additional issues in October, 2018.

In the instant case, the Madras High Court affirmed that a petition for stay under section 124 will lie only when the validity of the registered trademark is questioned and not otherwise. It was also held that a party, which despite having the materials to raise a plea of invalidity, failed to raise a same, cannot be permitted to raise the same, cannot be permitted to raise the issue in subsequent pleadings, as it amounts to constructive Res judicata.

It is pertinent to note that in the said case, the defendant’s rectification application challenging the validity of Plaintiff’s mark, was returned as defective and was abandoned under rule 7(4) of the IPAB procedures Rules, 2003.

However, IPAB granted liberty to the defendant to file a fres rectification application and the plaintiff challenged the order by way of writ petition before the High Court. In the writ petition, the High court has left this question to the Trail court to decide upon the tenability of the issue of validity, and later on trial court rejected the application for framing additional issue by the defendant as the right to file rectification was already abandoned by the defendant by virtue of rule 7(4).

The high court held that the rectification application filed by the defendant is an unborn child, and having failed to rectify the defects within the timeline provided under the act and Rules, the defendant had lost the right to question the validity forever.

 At last Madras High court had held that the party who has not pleaded the invalidity of the registered trademark loses the right to have an additional issue being framed. 


Here we would like to conclude by saying that the onus therefore is on the trial court to deal with the tenability of the issue in relation to the plea of invalidity, based on the facts and circumstances of the given case. If the trial court holds that the issue must not be framed, then it shall no longer be res integra that the party could ride twin boats of both a suit in a civil court and IPAB. This was laid with the clear intention that a party shall not be allowed to use this as a dilatory tactic to defeat the ends of justice.

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