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ost-Indian independence, with the evolving economy and the rapid advancements in businesses, ideas, and innovations in the marketplace, legislations such as the trade mark law and the competition law were enacted to safeguard the interests of business owners and proprietors. As part of this evolution, large traders, industries, and business magnates sought to monopolise markets, often overshadowing smaller enterprises and cottage industries. Small enterprises, however, contribute approximately 30% to India’s gross domestic product (GDP) playing a vital role in fiscal growth by supporting various industries and services, while fostering entrepreneurial ventures. Therefore, it is imperative to protect these smaller entities under the law to ensure balanced economic development and prevent monopolistic practices that could stifle competition and innovation.A metaphor is commonly used “big fish eat little fish” which derives from the subject of a 1556 painting by a Netherlandish artist; in a chaotic depiction of large fish devouring their miniatures might relate to a general sense of injustice. Likewise, in voice of the Delhi High Court in Kumar Electric Works v. Olympia Home Appliances (P) Ltd. —
8. The defendants may be a part of a large, influential and prosperous family and in comparison the plaintiff may be, as is said, “a small fry”. So what? In the domain of law, a big fish needs sanction to eat a small fish. What the law protects, (and I know I am echoing the words of Lord Diplock in Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd. ) by a passing off action is a trader’s property in his business or goodwill. And, what is goodwill? Lord Macnaghten tells us that it is “the benefit and advantage of the good name, reputation and connection of a business … the attractive force which brings in custom” (IRC v. Muller & Co.’s Margarine Ltd. ) These, then, are the principles and they do not change even where one party is a corporate giant and the other nowhere near it.
Thus, the law provides no right for a huge entity to suppress weak-developing entities in the market by way of using law as a weapon.
Not only law does not provide such rights against honest adopted of the mark but also substantiates remedies against such wrong doers. Similarly, in the , the legislature has provided provisions for the legal interest of these sectors with respect to their intellectual property. Among the various provisions, there is one section which provides remedies to the innocent individuals i.e. “Groundless threats of legal proceedings” under Section 142 of the Trade Marks Act (prior to the Amendment, it was under Section of the ).
On comparing both of these sections i.e. Section of the and Section of the , it can be noted that there is not even a slight change appeared in the terms and language of the section, which represents that they are same as well as the legislative intent behind the section. Therefore, this section has been adopted in the new Act as well with the intent to safeguard the innocents, trade mark holders, businesses and non-infringers.
Initially, trade mark proprietors could, without sufficient cause, issue legal threats against other entities or individuals, leading to unnecessary litigation or coercion, often causing undue harm to legitimate business activities. The absence of clear recourse for parties subjected to such baseless threats created an imbalance, allowing misuse of legal rights for competitive advantage.
The need for such legislative intervention arose to curb the abuse of legal processes by trade mark owners who sought to intimidate competitors or potential market entrants through frivolous or unjustified legal threats. The legislature recognised that while trade mark protection is essential, there should be safeguards against its misuse. This imbalance between the rights of trade mark proprietors and those subjected to threats necessitated the introduction of a provision that would protect businesses from harm arising from baseless accusations of infringement.
Section of the , provides a remedy for individuals or entities facing groundless threats of trade mark infringement proceedings. It allows the aggrieved party to file a suit seeking a declaration that the threats are unjustified, an injunction to restrain the continuation of such threats, and compensation for any damage caused. This provision serves to balance the rights of trade mark holders and protects legitimate businesses from the coercive misuse of legal rights. For sake of brevity and easy perusal Section 142 is reproduced below:
142. Groundless threats of legal proceedings.—(1) Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding, a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained, unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark.
(2) The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of Section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.
(3) Nothing in this section shall render a legal practitioner or a registered trade marks agent liable to an action under this section in respect of an act done by him in his professional capacity on behalf of a client.
(4) A suit under sub-section (1) shall not be instituted in any court inferior to a District Court.
Safeguard against illegal threats
Remedies against such illegal threats are envisaged under Section 142(1). It can minimally be understood by dividing Section 142(1) into three fundamental parts as follows:
Firstly, “where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding”, which entails:
1. “Where a person, by means of circulars, advertisements or otherwise”
The phrase “by means of circulars, advertisements” as referred to in Section of the , pertains to the modes or methods employed by a person when making a groundless threat of legal action for trade mark infringement.
This terminology encompasses various forms of communication, including but not limited to public notices, brochures, announcements, or other similar publications. Such means are typically utilised to disseminate information or threats on a broad scale, often with the intent to cause widespread apprehension or to damage the reputation or business interests of the recipient.
This section specifically addresses instances where the threat of legal proceedings is communicated through such public channels, recognising that the use of these means may amplify the adverse effects of the threat. The broad dissemination of the threat through circulars or advertisements can harm the business interests of the threatened party, affect its standing in the marketplace, and potentially result in financial loss or reputational damage, even in the absence of any actual or legitimate claim of trade mark infringement.
As in Chartered Institute of Taxation v. Institute of Chartered Tax Advisors of India Ltd. supported “Section 142 of the Trade Marks Act is the remedy provided by the legislature against the mischievous acts, by means of circulars, advertisements or otherwise….” Further, the case also clarifies about what must not come within the meaning of “circular or advertisement” i.e. “Certainly oppositions filed in statutory proceedings cannot be equated with circulars or advertisements with reference where to remedy of Section 142 of the Trade Marks Act has been provided.”
The phrase “or otherwise” as used in Section of the , is intended to encompass a broader scope of actions beyond those explicitly mentioned, such as “circulars” or “advertisements”. This phrase ensures that the provision applies to any and all forms of communication or conduct through which a person may issue a groundless threat of legal proceedings concerning trade mark infringement. The term “or otherwise” thus captures a wider range of actions, irrespective of the specific medium used to convey the threat.
This expansive language includes, but is not limited to, instances where the threat is made through the filing of an opposition in a pending trade mark application, the issuance of a legal notice, the dissemination of a cease and desist letter, or even verbal warnings. The inclusion of “or otherwise” ensures that the provision is not limited to threats made solely through formal or public channels but also applies to private communications or indirect threats intended to exert pressure on the recipient.
In essence, the use of “or otherwise” broadens the ambit of the provision to include any method or mode through which a person may attempt to unlawfully coerce or intimidate another by alleging trade mark infringement. This ensures that the remedy provided under Section 142 is comprehensive and effective in curbing all forms of groundless threats, regardless of the specific manner in which they are conveyed.
The Madras High Court in Exxion Corpn. v. Exxon Packing Systems (P) Ltd. has held that:
13. Having regard to these rulings, we find no difficulty in upholding the argument of Mr U.N.R. Rao, learned counsel for the respondent, and, therefore, we are of the view that the word “otherwise” would take within its fold a lawyer’s notice also. Of course, having regard to the language of Section 120(1) [now under Section 142(1)], the Court will have to find out, as of fact, whether these threats are unjustified or not. That is a matter which could be decided ultimately in the suit on an analysis of the evidence.
Moreover, the term “or otherwise” within the context of Section of the , extends beyond written forms of publication and does not require the threat to be formally published. As held by the Delhi High Court in Sidharth Wheels (P) Ltd. v. Bedrock Ltd. , the Court clarified that threats need not be “published” to be actionable under Section 120 of the Act, which deals with groundless threats of legal proceedings. The Court held that the scope of “or otherwise” encompasses not only formal, written publications but also any direct or indirect communication, whether public or private, through which a baseless threat of trade mark infringement may be made.
Therefore, the actionable threat need not take the form of a publicised notice or document; rather, any act of conveying a groundless threat, whether through personal communication, legal notices, opposition filings, or cease and desist letters, falls within the purview of Section 142. Thus, Court has ensured that the provision offers broad protection against all types of groundless threats, regardless of the mode or form of communication, thus safeguarding individuals and businesses from unjustified legal intimidation.
2. “Threatens a person with an action or proceeding for infringement of a trade mark which is registered, or alleged by the first-mentioned person to be registered, or with some other like proceeding”
The phrase “threatens a person with an action or proceeding for infringement of a trade mark which is registered” signifies that the person issuing the threat is alleging trade mark infringement and is seeking a remedy based on that claim. Trade mark infringement remedies, as per the law, are available only to the proprietors of registered trade marks under the . Thus, for a threat to be actionable under this provision, it must be specifically for trade mark infringement, and the person making the threat must hold a registered trade mark.
Infringement proceedings cannot be initiated or threatened by someone whose trade mark is unregistered, as the legal remedy for infringement is exclusively available to registered trade mark owners. Therefore, if a person threatens another with legal action for trade mark infringement without holding a registered trade mark, such a threat would be groundless and subject to the protections afforded under Section 142, which is designed to prevent the misuse of infringement threats by those without the requisite statutory rights.
In Mehta Unani Pharmacy & Co. v. Amrutanjan Ltd. , it is said that:
8. … The threat can be made to a “body of persons” of whom the person who invoked the jurisdiction under Section 120 (now Section 142) of the Act may be one, if he is aggrieved by the threat held out.
The phrase “or some other like proceedings” refers to legal actions or proceedings that are similar in nature to those for trade mark infringement. Given that the term “an action or proceedings” directly pertains to trade mark infringement claims, “or some other like proceedings” extends the scope to encompass various other legal actions that are related to the protection of trade marks. These could include proceedings such as those related to passing off, unfair competition, or any other legal claim that may arise from the use of a trade mark, whether the trade mark in question is registered or unregistered.
The legislative intent behind this part of the section is to offer broader protection to individuals or businesses who may be unjustly threatened not only with direct infringement claims but also with other legal actions that are comparable in their nature and effect. This ensures that parties are safeguarded against any unjustified legal actions or threats that could potentially interfere with their rightful use of trade marks or harm their commercial interests.
Secondly, “a person aggrieved may, whether the person making the threats is or is not the registered proprietor or the registered user of the trade mark, bring a suit against the first-mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats and may recover such damages (if any) as he has sustained”.
The term “person aggrieved”, as utilised in Section of the , specifically refers to an individual or entity that has been subjected to groundless threats regarding alleged trade mark infringement. This provision is designed to extend protection to those who experience harassment or intimidation through unfounded legal threats made by another party, typically someone purporting to be a trade mark proprietor. Consequently, the aggrieved party may seek legal recourse under Section 142(1) in a court of law against the individual or entity making such threats.
Under this section, the aggrieved trade mark proprietor possesses the right to initiate a legal suit and seek various forms of relief. The available remedies include:
Declaration of non-infringement: The aggrieved party can seek a declaration affirming that the threats made against them are unjustified. This declaration serves to establish that the alleged infringement does not exist and that the aggrieved party is not in violation of any trade mark rights.
Injunction against continuation of threats: The aggrieved individual may also request an injunction to prevent the threatening party from continuing to issue such baseless threats. This remedy is crucial as it provides immediate relief, protecting the aggrieved party from further harassment and potential damage to their business interests.
Damages or compensation: In addition to the above remedies, the aggrieved party may claim damages or compensation for any harm suffered as a result of the groundless threats. This could include financial losses incurred due to the threat’s impact on their business operations or reputation.
The significance of this section was highlighted by the Delhi High Court in Manoj Kumar Maheshwari v. TIPS & TOES Cosmetics (P) Ltd. The Court emphasised that when a person threatens another with legal action for trade mark infringement or related proceedings, the aggrieved individual is entitled to file a suit seeking a declaration that such threats are unjustifiable, along with an injunction to prevent further threats. This ruling reinforces the protection afforded to individuals who are subjected to unwarranted legal intimidation.
Moreover, it is essential to understand that the burden of proof rests with the aggrieved party to demonstrate before the court that the threats made were, in fact, baseless or groundless. This requirement underscores the necessity for the plaintiff to provide adequate evidence supporting their claim. The Madhya Pradesh High Court, in Ahilya Vedaant Education Welfare Society v. K. Vedaant Education Society , elucidated this point by stating that the plaintiff must first establish that the defendant has made groundless threats of legal proceedings. This can be accomplished through various means of communication, including circulars, advertisements, or other forms of correspondence alleging infringement of registered or unregistered trade marks. The Court noted that such cases necessitate a thorough inquiry, thus involving a detailed examination through the trial process.
Conversely, it is crucial to note that once the aggrieved party has made a prima facie case of groundless threats, the burden then shifts to the defendant. The defendant must demonstrate that the actions for which they threatened legal proceedings would constitute trade mark infringement. This involves bringing forward relevant evidence to substantiate their claims. The judicial inquiry thus encompasses a twofold examination: first, to assess whether the threats were indeed groundless and, second, to determine whether the threatened actions constitute trade mark infringement under Section of the .
In summary, Section of the , provides essential protections for individuals and entities who are aggrieved by groundless threats of legal action for trade mark infringement. By allowing the aggrieved party to seek declarations, injunctions, and damages, the section aims to safeguard against the misuse of trade mark rights and to ensure that legitimate businesses can operate without the fear of unwarranted legal intimidation.
Now, on the contrary to providing relief to the threatened individual, Section of the , also encompasses provisions that offer certain remedies to individuals or entities who, acting in good faith, have issued threats based on a genuine concern for the protection of their trade mark rights. This aspect of the section acknowledges that not all threats are inherently groundless or malicious; rather, there are instances where a trade mark owner may legitimately perceive that their rights are being infringed upon.
In such cases, if a person has made a threat of legal action for trade mark infringement with a bona fide intent — meaning that they genuinely believe that their trade mark rights are at risk of being violated — they may still seek protection under the provisions of Section 142. Specifically, the section allows for the possibility that a threatened party, if they can demonstrate that their claims are grounded in reality and that they possess valid legal rights, may not face the same liabilities or repercussions as those who issue groundless threats.
In practice, this means that if an individual threatens legal proceedings against another for trade mark infringement but can substantiate their claims with evidence and demonstrate that they have a registered trade mark, they may be shielded from actions brought under Section 142. Consequently, the provision serves to encourage responsible enforcement of trade mark rights, allowing trade mark owners to assert their rights while simultaneously preventing the misuse of such threats against innocent parties.
A remedy for the one who threatens
Section 142(1) (second part) entails that, “unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done, would constitute, an infringement of the trade mark”.
Along with Section 142(2) “The last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of Section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark.”
Thus, Section of the , is structured to provide a comprehensive framework for addressing the dynamics between individuals issuing threats of trade mark infringement and those who are subjected to such threats. The second part of Section 142(1) stipulates that “unless the first-mentioned person satisfies the court that the trade mark is registered and that the acts in respect of which the proceedings were threatened constitute, or, if done, would constitute, an infringement of the trade mark”. This provision introduces a critical requirement for the party issuing the threat to demonstrate, to the satisfaction of the court, two essential elements: firstly, that the trade mark in question is duly registered; and secondly, that the actions or conduct threatened against the other party would indeed amount to infringement, or would constitute an infringement if carried out.
In conjunction with this, Section 142(2) further elucidates that “the last preceding sub-section does not apply if the registered proprietor of the trade mark, or a registered user acting in pursuance of sub-section (1) of Section 52 with due diligence commences and prosecutes an action against the person threatened for infringement of the trade mark”. This provision clarifies that if the registered proprietor of the trade mark, or an authorised registered user, promptly initiates and diligently pursues legal action for trade mark infringement against the person who has been threatened, then the protections afforded under Section 142(1) are rendered inapplicable.
In essence, this division of Section 142 into sub-sections delineates a clear process for providing remedies to those who have issued threats. It establishes that when an individual or entity files a subsequent suit for trade mark infringement, this action serves to effectively negate the prior suit filed by the threatened party in accordance with Section 142(1). Consequently, the earlier suit, which was predicated on the alleged groundless threats, would be dismissed due to the emergence of a bona fide infringement claim being prosecuted by the party holding the registered trade mark.
Thus, to avail oneself of the benefits provided under Section 142(1) (second part) and Section of the , the following conditions must be satisfied:
(a) Registered trade mark holder: The individual or entity must be the registered holder of the trade mark in question. It is imperative that the issuance of any circulars or advertisements was executed with the bona fide intent of safeguarding their legal rights over the trade mark. This requirement underscores the necessity for the party issuing the threat to possess valid trade mark rights, ensuring that the protection afforded under Section 142 is reserved for those with legitimate claims.
(b) Prima facie standard of proof: The party issuing the threat must establish a prima facie standard of proof, demonstrating that the facts presented are true beyond a reasonable doubt. This involves providing sufficient evidence to substantiate the claim of infringement and the assertion that the threatened actions constitute an infringement of the trade mark. The burden of proof lies with the party making the claim, ensuring that only those with credible evidence may seek to invoke the protections of Section 142.
(c) Due diligence: The party must also demonstrate that due diligence has been exercised in their actions. This entails taking reasonable and timely steps to commence and prosecute an action for trade mark infringement against the individual who has been threatened. Section 142(2) explicitly states that those who have acted with due diligence should be exempt from injunctions, compensation, or damages sought by the threatened party. This provision emphasises the necessity of responsible conduct in enforcing trade mark rights, thereby shielding the bona fide trade mark holder from potential repercussions stemming from their protective measures.
In summary, to benefit from the provisions of Sections 142(1) and (2), the individual must be a registered trade mark holder and must establish their trade mark rights, present credible evidence supporting their claims to prove there its prima facie exists a case for infringement, and demonstrate diligence in pursuing legal action against any infringement. These conditions work collectively to ensure that the legal framework protects genuine trade mark proprietors while simultaneously safeguarding against the misuse of legal threats in the context of trade mark enforcement.
The Punjab and Haryana High Court in Kores (India) Ltd. v. Mona Stationery , held that, “The mere fact that trade mark of the appellant was stated to be a registered one will not make any difference.” Therefore, the other two factors need to be proved to strike out the initial case under Section 142(1).
Furthermore, in Arjies Aluminim Udyog v. Sudhir Batra , the Delhi High Court held that:
10.2. Section 120 (now under Section 142) would not apply also if a registered proprietor or registered user does not stop merely at having issued threats for an action or proceeding but also commences and prosecutes an action against the person threatened for infringement of the trade mark. The commencement of the action must follow the threat and show the quality of due diligence. Prosecuting the action should also have the quality of due diligence. In short, the threat followed by duly diligent commencement and prosecution of an action for infringement of the trade mark would exclude applicability of Section 120 (now under Section 142) and disentitle the person threatened from initiating an action thereunder.
Thus, legislature have intended that this section must not be used as a bar to some legal proceeding or against any side of the party to utilise their legal rights. As the prime legislative intent of this section is to prevent holders of monopoly rights from asserting a consequence of possession of their monopoly of their which they are not prepared to sustain by action.
Therefore, when a subsequent suit is filed under Section of the by the proprietor (second party) of the registered trade mark, it does not automatically imply that the prior suit instituted under Section 142(1) (first part) by the threatened individual (first party) alleging an illegal or groundless threat would be dismissed at the threshold. The mere filing of an infringement action by the trade mark proprietor does not, in itself, invalidate the earlier suit.
The registered proprietor filing the subsequent suit under Section 142(2) must satisfy certain legal requirements before the prior suit can be dismissed. Firstly, the second party (proprietor) must establish that the trade mark in question is validly registered, as trade mark infringement remedies are only available to holders of registered trade marks. This step is crucial in asserting their right to take legal action against the first party. Secondly, the second party must demonstrate prima facie that there exists an actual infringement of the trade mark. The burden is on the trade mark owner to show that the conduct or use alleged by the first party constitutes, or if continued, would constitute, an infringement of their registered trade mark. A mere threat without substantiating evidence of infringement is insufficient. Lastly, the second party must establish that the subsequent infringement suit has been instituted with due diligence, meaning there must be no material suppression of facts, and the suit must not suffer from the legal doctrines of estoppel, delay, laches, or acquiescence. The proprietor must have acted promptly and in good faith, without any intention of misleading the court or the first party.
Thus, the dismissal or rejection of the earlier plaint filed by the first party is not automatic and cannot occur at the threshold of the subsequent suit filed by the second party. It is a matter of trial, and the court must carefully examine whether the registered proprietor’s claims meet the legal standards for trade mark infringement and whether the prior suit for groundless threats should be maintained or dismissed.
Section 142(3) — This section does not apply on the legal practitioner or advocates or any trade mark agent who are working on behalf of their client as a legal representative to safeguard the rights of their client using Section 142 of the said Act.
Section 142(3) provides an exception under the law for “legal practitioners and registered trade mark agents”. The term “legal practitioners” refers to advocates who are duly enrolled, licensed, and practicing before a court of law, specifically in matters concerning trade marks as a form of intellectual property. The term “registered trade mark agents” pertains to individuals who have qualified by successfully passing the prescribed examination conducted by the Trade Mark Office and are duly authorised to assist in matters relating to trade mark registration and filing.
Moreover, the phrase “an act done by him in his professional capacity on behalf of a client” underscores that acts performed by a legal practitioner or registered trade mark agent in the course of an active legal proceeding or matter are covered under the scope of this provision. Consequently, such practitioners or agents, while acting in furtherance of their professional duties and in accordance with the interests and instructions of their clients, are protected under this section. They shall not be held personally liable for any actions performed in a non-professional or personal capacity. The legal outcome of the case, whether decided in favour of the client or not, does not affect the application of this protection.
Section 142(4) — The matters relating to Section 142 cannot be filed in a court inferior or subordinate to a District Court of the requisite region, herein.
Section 142(4) stipulates that “no suit shall be instituted in any court inferior to a District Court”, thereby establishing that cases falling within the ambit of Section 142 of the Trade Marks Act must not be tried or adjudicated in any court subordinate to the District Court. This provision reflects the legislature’s intent to ensure that matters of such gravity and importance are handled by courts of appropriate jurisdiction, thereby avoiding any procedural deficiencies or loopholes that may arise in lower courts. By setting a jurisdictional threshold, Section 142(4) seeks to maintain the integrity of the judicial process and ensure that trade mark disputes are addressed in a manner that minimises ambiguity and ensures effective administration of justice.
In conjunction with Sections 142(3) and (4) reflects a clear legislative intent to protect the interests of all parties, whether aggrieved or accused, against baseless threats of legal proceedings relating to trade marks. These provisions are framed to safeguard parties involved in such disputes and to ensure that any action arising from groundless threats is brought before a court of proper jurisdiction, ensuring fairness and mitigating the risk of unjust or erroneous outcomes.
Recent development
Recently, the District Court of Morbi and the Gujarat High Court in Kajaria Ceramics Ltd. v. Sonex Tiles (P) Ltd. shown, while interpreting this Section of under the , that the disentitlement of the person threatened due to filing of a counter suit by the other party must be done harmoniously. As, any such dismissal in a “premature” stage of the proceeding will be adverse for the interest of parties therein. A proceeding matures when the trial begins with all the evidences and admissions before the court of law and the parties through that evidences and examinations proves the infringement or the encumbrance to the goodwill of their involved and said trade marks. On appeal of the case, the Gujarat High Court said that,
5. … an opportunity is given to the plaintiffs to defend by producing evidence, no prejudice or damage can be said to be caused to the petitioners. It was further noticed that dismissing the claims of the plaintiff on technical ground would tantamount to depriving the plaintiffs from presenting their evidence and defence.
Also, held that,
6. However it is kept open for the petitioners to all the objections, including maintainability of the suit under Section of the at the time of arguments, after evidence are led by the parties. The rejection of application Ext. 35 by order in the order impugned will not come in the way of the petitioners-original defendants in the TM Suit No. 2 of 2020 to agitate the claim about maintainability of the suit.
Conclusion
In summary, Section of the , provides protection against groundless threats of trade mark infringement, while also offering certain remedies to registered trade mark proprietors acting in good faith. A person aggrieved by an unjustified threat can initiate a suit under Section 142(1), seeking relief through a declaration of non-infringement, injunction, or compensation. However, the second part of Sections 142(1) and (2) outline that if a registered trade mark proprietor subsequently files a genuine infringement suit, they must first prove the trade mark’s registration, establish prima facie evidence of infringement, and demonstrate due diligence in pursuing the infringement action. The mere filing of the subsequent suit does not automatically dismiss the earlier suit brought by the aggrieved party alleging groundless threats.
The dismissal of the prior suit filed under Section 142(1) by the aggrieved party is not immediate and can only be determined after a trial. The registered trade mark owner must prove the validity of the trade mark, the existence of infringement, and the absence of factors such as suppression of facts, delay, or estoppel before the court can rule on the earlier suit’s dismissal. Hence, the issue of whether the initial suit for groundless threats is dismissed or upheld remains a matter of judicial scrutiny based on the merits of both actions.
**Advocate, Partner, Law Firm of S&S Associates, Ahmedabad. Author can be reached at: advocatejavvadshaikh@gmail.com.
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