To answer the first two questions, reference is made to the judgment of the Madhya Pradesh High Court in Value Invest Wealth Management (India) Private Limited v. Value Invest Wealth Management (India) Private Limited, which held,
“The applicant/plaintiff in the plaint itself has not disputed that the trade mark, as claimed in the notice, is a registered trade mark of the defendants. Though the notice can be treated to be a threat, but in the facts and circumstances of the present case, it is clearly proved that after issuance of notice and reply, no further notice has been received. This Court, in exercise of powers under Section 142 of the Act cannot restrain the holder of the registered trade mark to bring out action in accordance with law. The suit under Section 142 of the Act cannot bar the defendants from filing the suit under Section 29 of the Act, where trade mark is registered.”
In ReSiva Industries And Holdings Ltd v Tata Teleservices Ltd & Ors, the Delhi High Court commented,
“Whenever the Legislature felt a need to constitute a legal notice as a cause of action, it has provided so. Mention in this regard may be made of Section 60 of the Copyright Act, 1957 and Section 142 Trade Marks Act, 1999 pari materia which enables a suit to be filed against threats of infringement. However as per proviso thereto, the said provision also does not apply once the legal proceedings as consequence of threat are instituted.”
However, in the context of filing a notice of opposition in a trade mark application, Justice Endlaw in The Chartered Institute, held,
“Section 142 of the Trade Marks Act is the remedy provided by the legislature against the mischievous acts, by means of circulars, advertisements or otherwise, threatening a person with an action or proceeding for infringement of trade marks. Certainly oppositions filed in statutory proceedings cannot be equated with circulars or advertisements with reference whereto remedy of Section 142 of the Trade Marks Act has been provided. “Once the Registrar of Trade Marks, being a statutory authority empowered to decide the opposition, is seized of the matter, the pleas if any of the plaintiff, of the grounds taken in the opposition being frivolous, groundless and baseless, have to be adjudicated by the Registrar, and / or in proceedings against the order of the Registrar, and not by way of a separate suit.”
Therefore, it is implied that issuing of a legal notice can be said to be a ‘threat’ within the meaning of Section 142 of the Trade Marks Act. However, initiating quasi-judicial proceedings by filing opposition or rectification does not amount to issuing a threat under this Section.
Source: Barandbench
