The Delhi High Court recently decided an application filed on behalf of the Plaintiffs seeking permission to file a rectification petition against the Defendant’s trademark registrations for the TRAVELXP mark.
The Plaintiffs had filed the civil suit seeking permanent injunction against the Defendant alleging infringement of the Plaintiffs’ TRAVELEX mark as well as passing off. The Defendant, in its reply, alluded to its registration for the TRAVELXP mark and use of the TRAVELXP mark since 2009.
Upon learning of the Defendant’s trademark registration, the Plaintiffs filed an application seeking leave to file a rectification against the registration. The Court observed that, while ruling on such an application, the Court is only required to render a prima facie view regarding tenability of the plea of invalidity of the Defendant’s registered trademark. Placing reliance on the dicta of the Supreme Court in case of Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors., (2018) 2 SCC 122, the Court observed that two things need to be examined, namely, (a) whether the Plaintiffs have raised a plea of invalidity, and (b) prima facie tenability of the plea of invalidity. The Court after perusal of the amended plaint filed by the Plaintiffs, held that the Plaintiffs have sufficiently pleaded the invalidity as required under law. Furthermore, upon consideration of the alleged phonetic and visual similarity between the rival marks and the commonality of activity, the Court held the plea of invalidity to be prima facie tenable.
Travellers Exchange Corp Ltd & Ors v. Celebrities Management Pvt Ltd CS (COMM) 51/2016, Decision dated October 20, 2022.