Introduction
The rights of the proprietor of trademarks are protected by virtue of the remedies provided in statutory laws as well as common laws in accordance with the registration and non-registration of the trademark. The registration of a trademark provides legal recognition and exclusive rights to the owner, and the primary remedy under statutory law is suing for infringement of the registered trademark. The registration of a trademark is highlighted in accordance with the fundamental principle that "registration is prima facie evidence of validity and facilitates proof of title by a plaintiff suing for infringement of his/her trademarks" based on the case of National Bell Company v. Metal Goods Manufacturing Company Private Limited, AIR 1971 SC 898,and therefore,registration of a trademark is primary proof of its validity, and the onus to prove the invalidity of the trademark lies heavily on the defendant.
Section 31 of the Trademarks Act, 1999
Sub-clause 1of Section 31 of the Trade Marks Act, 1999 (Act), provides that in all the legal proceedings with respect to the registered trademark under this Act, the prima facie evidence of validity of the trademark is taken into account with the fact that the original registration of the trademarks has been done and, additionally, all the subsequent assignments and transmissions of the trademark.
This provision establishes a legal presumption that the trademark owner holds exclusive rights to the mark, and the burden of proving invalidity lies with the party challenging the registration.
Sub-clause 2 of this provision states that a registered trademark can't be declared invalid just because it might not have met all the registration conditions as per Section 9 of the Act, unless there is evidence of distinctiveness that was not submitted to the registrar before registration, or if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title to become distinctive at the date of registration.
Court's Stance
The Delhi High Court in the case of Marico Limited v. Agro Tech Foods Limited ((2010) (43) PTC 39 (Del)) held that as per Section 31 of the Act, registration is only primatrademark facie evidence of the validity of the trademark; the Court can question the validity of the registration while considering the application for grant of injunction. Hence, the onus of proving the invalidity lies on the person who challenges the validity of the mark. The court held that it is in their right to adjudicate upon the validity of a trademark in cases where the registration of the trademark is ex facie illegal, fraudulent, or shocks the conscience of the court, and the threshold to prove such invalidity is indeed high.
In the case of Shakti Bhog Foods Limited v. Parle Products Private Limited (Appeal (L) No. 674 of 2012), Parle Products was the registered proprietor of the mark GLUCO. The defendant contended that GLUCO, being a descriptive term, cannot be monopolized, and in response to it, Parle Products asserted that in a case of infringement, the court cannot go into the question of the validity of a registration, as it does not have the power to do so. In response, the Hon'ble Bombay High Court held that while there exists a very strong presumption in law as to the validity of the registration of the trademark, the courts are not powerless to refuse to grant an interlocutory injunction based on a plaintiff's registered trademark in exceptional circumstances when the registration of the trademark itself is ex facie illegal, fraudulent, or shocks the conscience of the court.
Conclusion
To conclude, Section 31 of the Act provides significant legal benefits to trademark owners, establishing a presumption of validity for registered trademarks, making the registration process more efficient, and protecting owners' rights in cases of infringement. By placing the burden of proof on the defendant, it ensures that trademark owners are not unfairly burdened with proving the validity of their registration in every case.
While the provision does not make the registration conclusive evidence, it gives the registered owner a strong starting point in legal proceedings. Thus, this provision not only strengthens the protection of trademarks but also promotes the smooth functioning of the legal system in trademark disputes.
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