In Lupin Limited v Johnson & Johnson (Notice of Motion (L) No 2178 of 2012 of Suit (L) No 1842 of 2012), the Full Bench of the Bombay High Court (the Court) has held that a court can go into the question of validity of a registered trademark at the interlocutory stage if the registration is ex-facie illegal, fraudulent or shocks the conscience of the court.

Background

Lupin Limited (Lupin) had filed an infringement action against the use of Johnson & Johnson’s (Johnson) mark NUCYNTA, based on Lupin’s registered mark LUCYNTA. Johnson raised the defence that: (i) NUCYNTA was registered in other countries prior to Lupin and that Lupin is not entitled to relief as its adoption of the name LUCYNTA for an identical drug is deceptive, and (ii) Johnson had filed a passing-off action against Lupin’s use of LUCYNTA which was pending before the Delhi High Court.

Before deciding on Lupin’s plea, the Single Judge of the Court felt that that the earlier stance taken by the Court (Earlier Stance), that the validity of Plaintiff’s trademark registration cannot be questioned at the interlocutory stage as long as the mark remains on the register (even wrongly) in a number of its decisions, especially Maxheal Pharmaceuticals v Shalina Laboratories Pvt Ltd[1] and Hindustan Embroidery Mills Pvt Ltd v K Ravindra and Co[2], required reconsideration by the Full Bench of the Court in view of the following:

  1. The Earlier Stance of the Court was in conflict with the Court’s decisions in J.K Sons v Parksons Games & Sports[3] and Abdul Cadur Allibhoy v Mahomedally Hyderally[4] which enunciated the principle that a party who himself has imitated somebody else’s trademark is not entitled to an order of injunction;
  2. As per Sections 28 and 31 of the (Indian) Trade Marks Act, 1999 (Act), the  protection granted to the registered proprietor is on the condition that the said registration is valid and registration is only prima facie evidence of its validity respectively;
  3. The Supreme Court in N.R Dongre v Whirlpool Corporation[5] had taken a view that in a passing off action, an injunction can be granted against the owner of a registered trademark; and
  4. The Delhi High Court had already taken a contrary stance in its decisions especially Lowenbrau AG v Jagpin Breweries Ltd[6] and Marico Limited v Agro Tech Foods Limited[7].

Decision

After considering the arguments and issues discussed, the Full Bench of the Court has held that a court can go into the question of the validity of a registered trademark at an interlocutory stage if the registration is ex-facie illegal, fraudulent or shocks the conscience of the court. The Court has also noted that in order to establish the above grounds, a very high threshold of prima facie proof would be required.

Khaitan Comment

This decision is important as the previous conflicting stands taken by the Court and the Delhi High Court appear to have been aligned. This decision is a paradigm shift from the Court’s Earlier Stance, which was used by plaintiffs to their advantage. The Single Judge has rightly noted in the order that technological advancement and availability of information and knowledge worldwide cannot be ignored. While this observation was based on the aspect of trans-border reputation/awareness in India acquired by a branded drug, the technological advancement also holds well in case of the availability of (Indian) Trade Marks Registry’s (TMR) data online. When the Earlier Stance was taken, the defendants had no option to check the plaintiff’s prosecution history and whether the plaintiff itself had copied earlier marks on the Register of Trade Marks. The TMR’s transparency has given the defendants option to rely on “prosecution history estoppel”. Hopefully, this decision will be used in the correct spirit.