Intercontinental Great Brands LLC V. Parle Product Private Limited, CS(COMM) 64/2021

Facts

The plaintiff is the proprietor of the registered device marks as well as word marks OREO and OREO O’S which have become synonymous with vanilla filled chocolate cream cracker biscuits manufactured by the plaintiff.

The Plaintiff has recently come across the journal advertisements of the trademark applications filed by the Defendant for the marks FAB!O and FAB!O (stylised), which have now been duly opposed by the Plaintiff. Furthermore, as per the Plaintiff’s recent findings and investigations, it was found that the Defendant has recently started manufacturing, selling and advertising cream filled cookie/biscuit namely FAB!O bearing the marks FAB!O, FAB!O (stylised), labels/trade dress, and cookie trade dress which are identical and/or deceptively and confusingly similar to the Plaintiff’s well-known and earlier registered OREO trade marks.

Issue

Whether the rectification petition filed by the plaintiff challenging the validity of the trademark of the Defendant under Section 124 of the Trade Marks Act, 1999 tenable?

Decision

In order to determine the maintainability of the rectification petition under Section 124 of the Trade Marks Act, 1999, the Court is required to examine whether the defendant has raised a Section 30(2)(e) defence and if, it has, whether the plaintiff has questioned the validity of the defendant’s mark by raising a prima facie tenable challenge.

The Court will only be satisfied with the plea of invalidity of the defendant’s mark under Section 124(1)(ii) if it is based on the averments contained in the plaint and the replication, and not on any other independent application, including that preferred under Section 124. If no case challenging the validity of the defendant’s mark is found either in the plaint or in the replication, such a case cannot be made out separately in the Section 124 application even though the application may explain the basis in greater detail. The Plaintiff clearly failed to specifically make a plea regarding the validity of the mark FABIO either in the plaint or in the replication. The Court cannot interpret by reading into the plaint a plea that the registration of the defendant’s mark is invalid.

Hence, it was observed that a plea of invalidity of the defendant’s mark, which finds no place in the plaint or the replication, can be raised for the first time in the Section 124 application.