In Huali, the plaintiff instituted a suit seeking to obtain a permanent injunction against the defendants. Both the parties used the mark “HUALI” and both were in the same line of business. Although it was shown to the Court that the plaintiff was the first user of the mark, it had not yet secured its registration. The defendant, on the other hand, had secured a registration for the mark. So, the question before the Court turned to addressing the issue of how the plaintiff could seek relief. Drawing from a combined reading of Sections 27, 28 and 34 of the Trademarks Act, the Court held that the law certainly does not confer the holder of a registered trademark with absolute immunity from all claims made against it. As the Court saw it:
“The trademark registration does not confer immunity from challenges, particularly when allegations of passing off are substantiated by evidence of prior use. The registration, while offering statutory benefits, does not obliterate prior common law rights established through actual use and accrued goodwill in the market. This understanding is supported by a conjoint reading of Sections 27, 28 and 34 of the Act.”
Source: Barandbench
