Recently, whilst hearing an appeal against an order passed by a Single Judge of the Delhi High Court (High Court/Court) in a cancellation petition under Section 57 of the Trade Marks Act, 1999 (Act) filed by Institut Europeen D. Administration Des Affaires, Insead, Association (Respondent) against Fullstack Education Private Limited and another (Appellants), the Division Bench of the Hon'ble Delhi High Court held that merely forming a prima facie opinion would not be sufficient to grant a final order of rectification / cancellation.
The Learned Single Judge had, in the impugned order dated 17 May 2023 (Impugned Order), held that the Respondent's device mark containing 'INSAID' was prima facie phonetically similar to the Petitioner's mark 'INSEAD'. On the basis of such prima facie finding coupled with certain other factors including the fact that the parties were engaged in similar services i.e., providing higher education involving AI, the Single Judge of the Hon'ble Court had directed the Respondents' registration for the mark INSAID to be quashed and set aside. The Appellants (Original Defendants) preferred an appeal against the said Impugned Order before a Division Bench of the Court. The appeal has been allowed, and the matter has been remanded back to the Single Judge for consideration afresh on an expedited basis.
BACKGROUND
The cancellation petition (Petition) before the Single Judge was
filed by the Respondents as the registered proprietor of the marks
"INSEAD" and the device mark " 
" in classes 41, 35 and 16. The
Petitioner's word mark INSEAD is registered with effect from 7
August 2007 whereas the INSEAD device mark is registered with
effect from 28 December 2012. As opposed to this, the
Appellants' mark "
" was registered in class 41 with effect
from 12 February 2020 claiming use since 14 December 2018.
The Ld Single Judge, inter alia on a prima
facie finding of phonetic similarity of the rival
marks and on a finding that use by the Appellants did not prima
facie appear to be honest or concurrent, held that the
impugned mark 
was disentitled
registration under Section 11(1)(b) of the Act, including since the
rival marks were also being used in relation to similar services.
The Court had further applied the initial interest confusion
principle and held that there was likelihood of confusion given the
phonetic similarity of the marks and similar services being
provided by both parties. Thus, based on the above findings, the Ld
Single Judge had allowed the Petition and directed the registration
of the device mark 'INSAID' to be quashed and set
aside.
An appeal was preferred by the Appellants against the said Impugned Order and a Division Bench of the Delhi High Court allowed the appeal whilst observing that a direction under Section 57 of the Act would necessarily have to be preceded by a determination which is final and conclusive and not a prima facie view.
DECISION & ANALYSIS
The Division Bench of the Hon'ble Court observed that the power to cancel or vary a registration and to rectify the register stands permeated with characteristics of finality since the fallout of a direction under Section 57 would necessarily be a registered trademark being struck off the register. Accordingly, the Court held that such a direction would not be justifiable merely on the formation of a prima facie opinion which is formed after a preliminary examination of the lis and is tentative and irresolute. The Bench further observed that bearing in mind the inevitable import of an order made under Section 57, the opinion on the basis of which such an order would be passed would have to be definitive and conclusive.
CONCLUSION/COMMENT
Whilst prima facie opinions of the court are a pre-requisite and hold immense value for grant of interim or ad interim reliefs, the same test would not suffice in matters such as this which attach to themselves, a colour of finality. Though the detailed Impugned Order passed by the Single Judge was not in the nature of an interim order and it did finally dispose off the Petition, the usage of the phrase "prima facie" in various findings therein, led to the order being set aside in appeal. If a party wishes to obtain urgent ad-interim or interim reliefs in matters of such nature, it may be advisable to seek an interim prayer requesting a stay of the impugned registration, pending the hearing and final disposal of the rectification petition. Such ad-interim/interim reliefs in the nature of a stay of the impugned registration have in fact also been granted by courts including the Bombay High Court in the case of Silvermist and Another v Ashok Shah and Another [COMMP(ST)/4487/2023].
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