Trademark Registration: Prima Facie Evidence of Validity?

This post was first published on June 3, 2011.

In a recent case, the Delhi High Court has categorically ruled that registration of a trademark is not prima facie evidence of its validity and thereby has created a slippery slope for most registrants of descriptive and less distinctive marks.

The case related to use of the word mark ‘KRISHNA’ in relation to milk and milk products. The Plaintiff, by virtue of prior usership and prior registration claimed a permanent injunction against the defendant from using the word ‘KRISHNA’. Plaintiff’s case was that by virtue of registration, the plaintiff enjoyed the prima facie evidence of its validity and a statutory monopoly to use the same to the exclusion of others. The defendant inter alia argued that monopoly could not be claimed over use of the word ‘KRISHNA’ which is the name of the famous Hindu deity and a name that is most commonly associated with milk and milk products. The defendant further argued that there were numerous identical and similar marks registered under the same class and other class which has led to dilution of the mark and hence no monopoly could be claimed over it.

The court dismissed the suit and allowed the defendant to use the mark ‘KRISHNA’ along with its existing prefixes. The court opined that the Plaintiff could not claim market monopoly over the word ‘KRISHNA’ in spite of its registration. The court based its opinion inter alia on the ground that the courts can frame opinions on the prima facie validity of a mark irrespective of its registration. The court stated that ‘notwithstanding the registration, the courts are competent to look into the prima facie validity of trademark’ or in other words ‘registration does not confer prima facie validity to a trademark’.

This decision by the Delhi high Court is open for discussion on several points:

1.       The Court’s stance on the prima facie validity of registered trademarks is in conflict with Section 31 of the Trademarks Act 1999 that grants prima facie validity to a registered trademark. Though the validity of the provision was not in question, it is interesting to note whether this judgment nullifies the effect of the provision thereby rendering it redundant.

2.       Without the ‘presumption of validity’, what advantage is a registrant of a trademark left with in a court of law as against a non-registered user.

3.       A search in the trademark registry data base yields thousands of cases where registration has been granted to marks containing words that are inherently descriptive (a search for the word ‘rice’ under class 30 will give you more than 10 registrations for the word ‘rice’ for rice products). Registrations have been indiscriminately granted in the past and such registrations by nature are infructuous. Such registrations are certainly in derogation to the statutory objective of maintaining the purity of the register. It is evident from the tone of the judgment that the Court originally intended to bring only such descriptive registered marks under scanner, but did a little too much by attributing generality to the ratio-decidendi.

Authored by Sandeep Hegde