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Dharmpal Satyapal Limited v. Mr. Basant Kumar Makhija & Ors.

“The Delhi High Court, recently, while interpreting the provisions of Section 124 of the Trade Marks Act, 1999 (“Act”), held that the plea regarding invalidity of a defendant’s registration can also be raised by a plaintiff in its replication. The court also interpreted “prima facie tenability” to be a prima facie view by the court, that such challenge is worth considering.

In the present case, the Dharampal Satyapal Limited (“Plaintiff”) filed an application under Section 124 (1)(ii) of the Act, for framing an issue regarding invalidity of the Basant Kumar Makhija’s (“Defendant”) registration, allowing it to file rectification action against such registration. Plaintiff stated that they have made a specific plea of invalidity in various paragraphs of its replication, since the Plaintiff can only raise such a plea only after the Defendant invokes a defense under Section 30(1)(e) of the Act.

The Defendant, on the other hand, stated that such plea of invalidity ought to be taken in the plaint, since replication cannot constitute pleadings and the Plaintiff instead ought to have amended its plaint. The Defendant also disputed that the Plaintiff’s challenge to its registration was prima facie tenable which would involve returning of a finding of success of cancellation action filed subsequently.

The court after noting that such plea of invalidity arises only after a defendant asserts its rights under the registration and claims defense under Section 30(1)(e) of the Act, held that the Defendant has made a plea as to invalidity of the Defendant’s registration in light of the contents of the replication. As regards prima facie tenability, the court reiterating the ratio of Supreme Court of India in Patel Field Marshal Agencies v. PM Diesels Ltd, AIR 2017 SCC 1388, observed that such a prima facie tenability implies only a prima facie view that such a challenge is worth consideration. The Court further observed that the merits of such challenge can only be adjudicated by the court deciding the validity of the defendant’s registration.

The court on the basis of the above-noted observation allowed the Plaintiff’s application, framing an issue of invalidity of the Defendant’s registration and in light of this, also adjourned the civil suit for a period of three (3) months, enabling the Plaintiff to file rectification petition before the Delhi High Court”.

Dharmpal Satyapal Limited v. Mr. Basant Kumar Makhija & Ors., I.A. 14129/2023, in CS (Comm) 806/2017, Judgment dated October 17, 2023.

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