N.R. Dongre And Ors vs Whirlpool Corporation And Anr on 30 August, 1996
A trademark is ordinarily used in relation to goods of a
manufacturer. A trademark can be registered but ordinarily
registration is not granted if the mark falls under sub-sections
1(a) to 1(c) of Section 9. The proviso however, provides for
entitlement to registration although ordinarily not permissible
under Sections 9 (1) (a) to (c), provided that the mark has
acquired a distinctive character as a result of its use prior to
registration or is otherwise a well known trademark. Registration
is only prima facie evidence of its validity and the presumption of
prima facie validity of registration is only a rebuttable
presumption, see para 31 of N.R. Dongre Vs. Whirlpool Corp.
1995 (34) DRJ 109 (DB). The right conferred by registration for
exclusive use of the trademark in relation to goods is if the
registration is valid and which flows from the expression "if
valid" occurring in Section 28. The expression "if valid" has been
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inserted for the purpose that post registration an aggrieved
person is entitled to apply for cancellation under Section 57 of
the Act even if no suit is filed alleging infringement of the
registered trademark. In case a suit is instituted, the court, once
there is already a pending action seeking cancellation of the
trademark, will stay the suit till the final disposal of the
cancellation/rectification proceedings. The court however is still
entitled to, in spite of registration, pass any interlocutory order
as it deems fit, including but not limited to, granting the
injunction or dismissing the prayer for injunction. If no
cancellation proceedings are pending as on the date of filing of a
suit for infringement if the court is satisfied with regard to the
plea of invalidity of registration (this language of Section
124(1) (a) (i) co-relates to the expression "if valid" as occurring
in Section 28) then the court may raise an issue in the suit and
adjourn the case for three months after framing the issues in
order to enable the defendant to apply to the Appellate Board for
rectification of the register. Even in the circumstances where the
court stays the suit for three months and permits a party to apply
for cancellation/rectification, the court can pass any
interlocutory order as it thinks fit under sub-section 5 of Section