OREO vs FABIO Specific Plea Of Invalidity, Tenable Grounds Essential To Challenge Validity Of Mark U/S 124 Trade Marks Act: Delhi High Court
Case: Intercontinental Great Brands LLC v. Parle Product Private Limited
Coram: Justice C. Hari Shankar
Case no.: CS(COMM) 64/2021
Court Observation: “firstly, the defendant must raise a Section 30(2)(e) defence by citing the registration of its mark as a defence to infringement and, if the defendant does so, the plaintiff must plead invalidity of the defendant’s mark”.
“the plaintiff has specifically to aver, and allege, that the registration of the defendant’s FABIO mark is invalid. Such an allegation must find place either in the plaint or in the replication”.
“…the requirement, envisaged by Section 124(1)(b), of the plaintiff’s challenging the validity of the defendant’s mark, envisages not only a specific plea, by the plaintiff, that the defendant’s mark is invalid, but also arguable grounds having been urged by the plaintiff in support of said challenge, so that the Court could satisfy itself that the challenge is prima facie tenable”
“In fact, the plea, made ever so often, that a party reserves its right to raise a particular plea or urge a particular challenge, is based on a fundamental misconception of law. A party can only seek permission from a Court to reserve its rights to urge a challenge at a later point of time”
“Having chosen to maintain a stance that the registration of the mark FABIO cannot entitle the defendant to use FAB!O, the plaintiff cannot, in the absence of an independent challenge to the registration of the mark FABIO of the defendant, seek to claim the benefit of Section 124(1).”
“Section 124(1)(b) clearly permits the plaintiff to question the validity of the mark which forms subject matter to the Section 30(2)(e) defence of the defendant. It does not necessarily require the mark asserted by the defendant in its Section 30(2)(e) defence to be the mark which is challenged in the plaint.”
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OREO vs FABIO Specific Plea Of Invalidity, Trade Marks Act, Delhi High Court
