Only the certificate issued under Section 137 of the Trademarks Act1991 has validity in legal proceedings; not the registration certificate. This legal aspect was discussed and re-confirmed in Misty Mountain Plantation Resort V/s M/s Surya Hotel and Properties by High Court of Kerala in OP(C) No. 1810 of 2024 on 26th day of March 2025.
‘Misty Mountain’ is registered trademark under application No.2441920 in class 43 on 6.6.2019 in respect of services of ‘providing of food and drinks and temporary accommodation. The proprietor of the trademark is one Mr. Michadel A Kallivayalil. The trademark is in use from 01/08/1999.
Misty Mountain Plantation Resort , a partnership firm ,claimed they are assignee of the trademark ‘Misty Mountain’ .
In 2016, the petitioner came to know about the respondent’s use of the said trademark with respect to a resort in Munnar. On enquiry, the petitioner came to know that the respondent secured a registration for the same mark with the application No.1969012. The petitioner immediately filed a rectification application for cancellation of the registration issued, and it was allowed, holding that the petitioner is the prior user of the trade mark. Despite the cancellation order, the respondent used the trade mark, violating the right of the petitioner and therefore, O.S.No.1 of 2022 was filed before the II Additional District and Sessions Court, Thodupuzha for a decree of declaration and for a permanent prohibitory injunction restraining the defendant from using in any manner the trade mark ‘Misty Mountain Resort’ or any other mark similar or deceptively similar to the registered trade mark of the plaintiff ‘Misty Mountain’. Along with the suit, an application for a temporary injunction under Order 39 Rules 1 and 2 read with Section 151 CPC was also filed. The learned District Judge passed an interim injunction order on 19.3.2022.
Subsequently the respondent filed an I.A for vacating the said interim injunction order on the ground ‘The petitioner was not a registered trade mark holder, but misrepresented that he had a registered trade mark and obtained the ex-parte injunction order’. After hearing both sides vacated the interim injunction order passed. Aggrieved by order in, the petitioner filed another I.A. to review the order which was dismissed the District Judge
Challenging the said order in I.A.No.8 of 2022, this O.P. is filed under Article 227 of the Constitution of India.
The contentions of the respondents are: Original Petition is not maintainable as it has been filed by the petitioner, who is not the lawful proprietor of the trade mark. He has also approached this court with unclean hands and has concealed the material facts and documents.
The counsel for the respondent argued , before the High Court, that when O.S.No.1 of 2022 was filed by the petitioner herein, with a prayer for a decree declaring that the plaintiff is the Registered proprietor-owner and prior user of the trade under the name and style of ‘Misty Mountain’ and for an injunction restraining the defendant and its representatives, their men, agents assigns, or acting through them from the use of trade mark ‘Misty Mountain’, the plaintiff ought to have produced the trade mark as mandated under The Trade Marks Act, 1999 (for short ‘the Act’) and not Ext.P1, as produced in this O.P. Ext.P1 is a certificate of registration issued under Section 23(2) of the Act and Rule 56(1) of the Trade Marks Rules, 2017. The certificate issued under Rule 56 cannot be used in a legal proceeding, and when this was pointed out to the learned District Judge, the court vacated the interim injunction. He further argued that under Rule 56 (2), the certificate of registration referred to in sub-rule (1) should not be used in any legal proceeding, and instead, only a certificate under Section 137 of the Act shall be used in legal proceedings. In Ext.P1 itself, at the bottom portion, it is specifically stated that the certificate is not to be used in legal proceedings or for obtaining registration abroad. So, the petitioner has committed fraud in the court by producing Ext.P1 and not producing a certificate as provided under section 137 of the Act.
The High Court observed when there is a clear bar under Rule 56(2) that a certificate referred to in sub-rule 1 shall not be used in any legal proceeding, the plaintiff should have produced a certificate under Section 137 of the Act as the suit document. The court should not have acted on Ext.P1, issued under Rule 56 (1) to hold that the petitioner was the registered trademark holder, when filing the suit. The High Court further observed that as of the date of filing of the suit i.e., on 16.3.2022, the petitioner was not a registered holder of ‘Misty Mountain’.
The court after detailed discussion held : “ The court below was justified in not entertaining the review on the ground that there is no error apparent on the face of the record since the injunction order was vacated when the court was convinced that the averment that the petitioner was not a registered trade mark holder as on the date of filing of the suit. I have gone through the order in I.A. No.8 of 2022, and I am satisfied that the District Judge was right in dismissing the application for the reasons stated therein. Therefore, no interference is warranted with the said order. In the result, this O.P.(C.) is dismissed.”