Delhi HC: Court Cannot Suo Motu Question Validity Of Trademark If Not Disputed By Defendant

The Delhi High Court, on 7 October, held that it was not open for a court to suo motu question the validity of the registration of the trademark if the same was not disputed by the defendant.

Bench of Justices Vibhu Bakhru and Amit Mahajan heard an appeal against judgment of the single judge whereby application under Order XXXIX Rule 1 and 2 of the Civil Procedure Code 1908 (CPC) instant appellant came to be dismissed.

Factual Matrix 

PEPS (appellant) claimed that it was using the mark ‘NO TURN’ in respect of mattresses, wall beds etc. since 15 January 2008. The mark ‘NO TURN’ was registered in favour of PEPS by a registration dated 4 February 2011 in respect of goods falling under Class 20 for mattresses, wall beds, adjustable beds, coir mats, spring mattresses, sofas, pillows, cushions, seats and other related products. 

Kurlon also claimed the same mark ‘NO TURN’ in respect of mattresses and claimed to be using it since the year 2007. PEPS, on becoming aware about the use of the same mark ‘NO TURN’ on the same product by KURLON, filed a suit seeking permanent injunction against KURLON from the use of the said mark. 

Decision Of Single Judge Bench

The single judge, dismissed the application under Order XXXIX Rule 1 and 2 of the CPC on the ground that the mark ‘NO TURN’ was a descriptive mark in relation to its use on mattresses.

Questions For Consideration

The Court formulated the questions for consideration as follows: -

(i) Whether KURLON who had itself applied for registration of the mark ‘NO TURN’ claiming it to be a distinctive mark was estopped from raising the issue of validity of the same mark on the ground of being descriptive.

(ii) Whether the single Judge was correct in adjudicating an issue, which was not raised by the parties.

(iii) Whether the descriptive mark could also be entitled for protection and whether the mark ‘NO TURN’ was descriptive. 

Observations 

The Court observed that, "If the validity of the registration of the trademark is not brought in issue, the statutory assumption that the marks are valid must be accepted. It is not open for a court to suo motu question the validity of the registration of the trademark if the same is not disputed by the defendant. However, insofar as Section 30(2)(a) of the Trade Marks Act, 1999 is concerned, we are refraining from making any observations in that regard as the applicability of the said question does not arise in the facts of the present case."

"That it was not apposite for the learned Single Judge to return a finding on the aspect of the mark being descriptive, as no such objection was taken by the defendant; we refrain from expressing any view on the questions, whether the mark ‘NO TURN’ is descriptive and whether its registration is valid," the Court noted.

Decision

The Court allowed the appeal and granted injunction in favour of the the appellant.