In the infamous case of The Coca Cola Company V Bisleri International Private Limited and Ors. – an issue arose as to whether the plaintiff had the right to register the trademark ‘MAAZA’ outside India. The defendants had sold their trademark rights, formulation rights, know-how, and goodwill of some of their soft drink products, including ‘MAAZA’, to the plaintiff through an agreement. In 2008, the defendants learned that the plaintiff had filed for the registration of the trademark ‘MAAZA’ in Turkey. Subsequently, they sent a legal notice to the plaintiff repudiating the agreement between the parties which ceased the plaintiff from manufacturing the soft drink or using its trademarks. The defendants had also stated their intention to use the trademark and the product in India. Thereafter, the plaintiff claimed for permanent injunction and damages against the infringement of its trademark. The defendants contended that ‘MAAZA’ was sold to the plaintiff for distribution and sale within India. Whereas, the plaintiff claimed that they were the absolute owners of the formulation and know-how. After hearing the detailed contentions and arguments of the parties, the High Court of Delhi held that the plaintiff was the registered owner of the trademark ‘MAAZA’ and granted an injunction in favor of the plaintiff. This judgment gained fame in the public eye due to the prompt and precise judgment by the Indian judiciary.

Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad & Ors 2014(58) PTC225 (Del) – The question raised in the said case was whether the Court can entertain the present suit in view of Section 28(3) read with Section 30(2) (e) of the Act. With respect to the above question, It was stated by the court that, ‘This Court has already held that a suit for such an injunction would lie where the two trademarks are registered and Sections 28(3) and 30(2) (e) do not bar the filing of a suit. Reference may be had to the judgment of Clinique Laboratories LLC and Anr. vs. Gufic Limited and Anr. (supra) wherein para 14 this Court concluded as follows:-

thus conclude that a suit for infringement of a registered/gi registration lawyers in Delhi is maintainable against another registered proprietor of identical or similar trademark and in such suit while staying the further proceedings pending the decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court if the court is prima facie convinced of invalidity of registration of the defendant’s mark.’

Court also relied on the judgment Rajnish Aggarwal & Ors. vs. M/s. Anantam – 2010(43) PTC442 (Del), where this Court in paragraphs 21 to 22 held as follows,

Following the above-quoted observation, the learned single judge, as far as this issue was concerned, was held as under 14. I thus conclude that a suit for infringement of a registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit while staying the further proceedings pending the decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court if the court is prima facie convinced of invalidity of registration of the defendant’s mark.

In view of the finding given in the earlier paras above and the case-law referred, I hereby hold that a suit for infringement is maintainable in the present case and that this court has got jurisdiction as per the averment made in the plaint/Intellectual Property Transactions In Delhi.

The question of whether Section 28(3) of the Act bars the Plaintiff from suing defendant no. 1 for infringement since both are the registered proprietors of identical marks was also answered in paragraph 17 of the very recent case of Dabur India Ltd. Vs. Real Drinks Pvt. Ltd. and Anr. (2014(57) PTC213 (Del).

The Delhi High Court observed that, In the first place, it must be noted that under Section 28 read with Section 31 of the TM Act, the protection to a mark is conditional upon its validity. Thus it becomes clear that the grant of registration is only a prima facie proof of its validity and the court has the power to examine the question of the validity of registration of a mark in an infringement suit, if the registration of the trademark was fraudulent, ex facie totally illegal or shocks the conscience of the court/Intellectual Property Enforcement And Litigation In Delhi

This is one of the Cases which deals with the provisions of Trademarks Act, 1999 as well as the Companies Act, 2013 where one of the Directors of Paramount acted in bad faith and started using the trademark of the Company for personal gains and was subsequently punished by the Court to repay to the Company the undue gain already made.