Case Note & Summary
The dispute arose from a suit for infringement and passing off filed by the plaintiff, M/s. Siyaram Silk Mills Limited, against the defendants, M/s. Shree Siyaram Fab Private Limited and three individuals. The plaintiff, a registered proprietor of the word mark 'SIYARAM' and a device/label mark prominently featuring 'SIYARAM', alleged that the defendants' label mark, which included the words 'SHREE SIYARAM FAB PVT. LTD.', infringed its trade marks. The defendants moved a notice of motion seeking rejection of the plaint under Order 7 Rule 11 of the Code of Civil Procedure, 1908, or alternatively under Section 151 CPC, on the ground that their mark was also registered, thus rendering the suit for infringement not maintainable. They contended that Sections 29 and 30(2)(e) of the Trade Marks Act, 1999, read with Section 134, barred the suit and that the court lacked inherent jurisdiction. Leave under clause XIV of the Letters Patent had been sought but not yet granted. The core legal issue was whether mere registration of the defendant's mark ousts the court's jurisdiction to entertain an infringement action. The defendants argued that the words 'not being a registered proprietor or a person using by way of permitted use' in Section 29 provided an absolute bar. The plaintiff countered that registration constitutes a defence, not a jurisdictional bar. The court analysed the scheme of the Trade Marks Act. It held that Section 29 enumerates circumstances of infringement and creates a defence, but does not prohibit filing of a suit or affect inherent jurisdiction. Similarly, Section 30(2)(e) only provides a defence. Section 134 is a mere forum provision. Crucially, Section 124 expressly recognises the right to file an infringement suit even when the defendant's mark is registered, providing for stay pending rectification proceedings rather than a bar. On the issue of plaint rejection, the court, relying on *Sopan Sukhdeo Sable v. Assistant Charity Commissioner* (2004) 3 SCC 137, held that under Order 7 Rule 11 only plaint averments are germane, and the plaint disclosed a cause of action with no apparent statutory bar. The defendants' plea of registration was a matter for defence, not for plaint rejection. Consequently, the court dismissed the notice of motion, holding that the suit was maintainable and the inherent jurisdiction of the court was not ousted.
Headnote
A) Trade Marks - Infringement - Registered Trade Mark - Trade Marks Act, 1999, Section 29 - The defendant argued that since its mark was also registered, the suit for infringement is barred. Held: Section 29 enumerates circumstances of infringement and provides a defence to an infringement action but does not prohibit filing of suit or affect inherent jurisdiction. (Paras 4-5) B) Trade Marks - Limits on Effect - Defence - Trade Marks Act, 1999, Section 30(2)(e) - Section 30(2)(e) provides that a registered trade mark is not infringed by use of another registered mark. Held: Like Section 29, it provides a defence but does not bar institution of suit. (Para 6) C) Trade Marks - Forum for Suit - Trade Marks Act, 1999, Section 134 - Section 134 merely specifies the forum before which an infringement action may be filed; it does not address maintainability of suit when defendant's mark is registered. (Paras 7-8) D) Trade Marks - Stay of Proceedings - Trade Marks Act, 1999, Section 124 - Section 124 expressly recognises the right to file an infringement suit even if the defendant's mark is registered. It provides for stay pending rectification proceedings rather than barring the suit. (Paras 9-10) E) Civil Procedure - Rejection of Plaint - Code of Civil Procedure, 1908, Order 7 Rule 11 - Under Order 7 Rule 11, only averments in the plaint are germane; pleas taken by defendant in written statement are irrelevant. The plaint disclosed a cause of action and no statutory bar appeared from its statements; hence rejection not warranted. (Paras 12-14) F) Civil Procedure - Inherent Powers - Code of Civil Procedure, 1908, Section 151 - Inherent power cannot be exercised to reject a plaint merely because defendant's mark is registered when no jurisdictional bar exists. (Paras 15-16)
Issue of Consideration
Whether the institution of an action for infringement is barred if the defendants' mark is also registered.
Final Decision
Notice of motion dismissed. Suit for infringement not barred merely because defendant's mark is registered. Sections 29 and 30(2)(e) provide defences, not a bar. Section 124 recognises right to file such suit. Plaint cannot be rejected under Order 7 Rule 11 as it discloses cause of action and no bar apparent from plaint. Inherent power under Section 151 also not exercisable.
Law Points
- Suit for infringement not barred merely because defendant's mark is registered
- Section 29 Trade Marks Act provides a defence not a jurisdictional bar
- Section 30(2)(e) provides a defence not a bar
- Section 134 merely provides forum
- Section 124 expressly recognizes right to file infringement suit even if defendant's mark registered
- rejection of plaint under Order 7 Rule 11 CPC limited to plaint averments
- inherent jurisdiction not affected by registration of defendant's mark
