In the dynamic realm of intellectual property law, disputes over trademark validity often highlight the delicate balance between proprietary rights and fair competition. The case of Franco India Pharmaceuticals Pvt. Ltd. v. Corona Remedies Pvt. Ltd., adjudicated by the Bombay High Court, exemplifies this tension. Centered on the registered trademarks "STIMULIV" and "STIMULET," the case delves into the intricacies of Section 124 of the Trade Marks Act, 1999, exploring the threshold for challenging the validity of trademark registration in infringement suits. This case study unravels the factual and procedural tapestry, dissects the legal issues, and analyzes the judicial reasoning that led the court to frame an issue regarding the validity of the plaintiff's trademark registration.

Detailed Factual Background
Franco India Pharmaceuticals Pvt. Ltd., the plaintiff, held registered trademarks for "STIMULIV" as both a word mark (Registration No. 297201 in Class 5) and a label mark (Registration No. 490598 in Class 5), with registrations dating back to 1974. These marks were used for an ayurvedic preparation aimed at liver stimulation. The plaintiff alleged that Corona Remedies Pvt. Ltd., the defendant, infringed upon its trademarks by using the registered trademark "STIMULET" for similar pharmaceutical products.

The defendant countered, asserting that the plaintiff's "STIMULIV" mark was invalidly registered due to its descriptive nature and misuse beyond a disclaimer limiting its exclusivity to non-descriptive elements. The dispute escalated when the defendant sought to challenge the validity of the plaintiff's trademark registrations, invoking Section 124 of the Trade Marks Act, 1999, which allows courts to frame issues regarding trademark validity in infringement suits.

Detailed Procedural Background
The plaintiff initiated a commercial intellectual property suit (Commercial IP Suit No. 105 of 2022) in the Bombay High Court's Commercial Division, seeking to restrain the defendant from using "STIMULET." On March 1, 2021, a Single Judge granted interim relief, prohibiting the defendant from using its trademark during the suit's pendency. The defendant appealed, and on January 20, 2023, the Division Bench overturned the interim order, finding no prima facie case of similarity between the marks.

The plaintiff's subsequent challenge before the Supreme Court was dismissed, leaving no interim relief in place. Meanwhile, on April 30, 2024, the court framed an issue regarding the validity of the defendant's "STIMULET" mark at the plaintiff's behest, under Section 124(1)(b)(ii). The defendant then pressed for a similar issue concerning the plaintiff's "STIMULIV" marks, relying on pleadings in paragraphs 18 and 41 of its written statement. This request, opposed by the plaintiff, led to the order dated April 7, 2025, by Justice Manish Pitale, which forms the core of this case study.

Issues Involved in the Case
The primary issue was whether the court should frame an issue under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, regarding the validity of the plaintiff's "STIMULIV" trademark registrations. Sub-issues included: whether the defendant's pleadings in paragraphs 18 and 41 of the written statement met the statutory requirement of prima facie tenability? whether the defendant's alleged mutually inconsistent pleas negated its challenge to the plaintiff's trademark validity; whether the defendant's prior filing of a rectification petition disqualified it from invoking Section 124; and the appropriate legal threshold for framing such an issue, particularly in light of judicial precedents defining "prima facie tenability.?

Detailed Submission of Parties
The defendant argued that paragraphs 18 and 41 of its written statement sufficiently challenged the validity of the plaintiff's "STIMULIV" marks. Paragraph 18 alleged that the plaintiff concealed a disclaimer limiting exclusive rights to non-descriptive elements and misused the mark beyond its ayurvedic scope. Paragraph 41 claimed the mark was descriptive, as it directly referenced liver stimulation, rendering its registration invalid.

The defendant relied on Section 124(1)(b)(ii), asserting that these pleadings satisfied the "low threshold prima facie case" test, as elucidated in Patel Field Marshal Agencies v. P. M. Diesels Ltd., (2018) 2 SCC 112. Citing Pepsico Inc. v. Parle Agro Pvt. Ltd. (CS (COMM) 268 of 2021, Delhi High Court, September 18, 2023) and Dharampal Satyapal Ltd. v. Basant Kumar Makhija, 2023 SCC OnLine Del 6598, the defendant emphasized that the court need only form a tentative view of tenability, not delve into merits.

The defendant further argued that its alternative pleas under Sections 12, 28(3), and 30(2)(e) were permissible and did not undermine its validity challenge, as it never admitted similarity between the marks. On the rectification petition issue, the defendant cited Resilient Innovations Pvt. Ltd. v. Phonepe Pvt. Ltd., 2023 SCC OnLine Del 2972, advocating that such petitions could be held in abeyance to avoid multiplicity of proceedings.

The plaintiff opposed framing the issue, arguing that the defendant's prior rectification petition rendered Section 124 jurisdiction inapplicable, as the section contemplates prospective filings within three months of issue framing. The plaintiff contended that the defendant's pleadings were frivolous, given "STIMULIV's" 50-year distinctive use and registration under the Trade and Merchandise Marks Act, 1958. Citing Burger King Corporation v. Ranjan Gupta, (2023) 94 PTC 137, the plaintiff argued that the defendant's descriptive nature claim was untenable. The plaintiff further asserted that the defendant's reliance on Sections 12, 28(3), and 30(2)(e) admitted mark similarity, creating mutually destructive pleas that disqualified its validity challenge, as per R. N. Gosain v. Yashpal Dhir, (1992) 4 SCC 683, and Neon Laboratories Ltd. v. Themis Medicare Ltd., 2014 SCC OnLine Bom 1087.

Detailed Discussion on Judgments Cited by Parties
The defendant relied on Patel Field Marshal Agencies v. P. M. Diesels Ltd., (2018) 2 SCC 112, where the Supreme Court clarified that Section 124 (pari materia with Section 111 of the 1958 Act) aims to eliminate false, frivolous, or untenable invalidity claims. The court emphasized a two-step test: specific pleadings challenging validity and arguable grounds demonstrating prima facie tenability. This precedent was pivotal in defining the court's jurisdiction and the low threshold for issue framing.

In Pepsico Inc. v. Parle Agro Pvt. Ltd. (CS (COMM) 268 of 2021, Delhi High Court, September 18, 2023), the Delhi High Court held that "tenable" requires only a subjective, tentative assessment of arguability, not a merits-based inquiry. Similarly, Dharampal Satyapal Ltd. v. Basant Kumar Makhija, 2023 SCC OnLine Del 6598, reinforced that the court need not rigidly interpret "tenable," focusing on a preliminary finding. Lupin Ltd. v. Johnson & Johnson, AIR 2015 Bom 50, a Full Bench decision, distinguished the low threshold under Section 124 from the higher threshold for interim relief, using the term "low threshold prima facie case." Resilient Innovations Pvt. Ltd. v. Phonepe Pvt. Ltd., 2023 SCC OnLine Del 2972, supported holding rectification petitions in abeyance to streamline proceedings.

The plaintiff cited Burger King Corporation v. Ranjan Gupta, (2023) 94 PTC 137, where the Delhi High Court rejected a validity challenge due to identical marks and frivolous defenses, but the Bombay High Court distinguished this case due to differing factual contexts. R. N. Gosain v. Yashpal Dhir, (1992) 4 SCC 683, and Neon Laboratories Ltd. v. Themis Medicare Ltd., 2014 SCC OnLine Bom 1087, were invoked to argue against mutually destructive pleas, asserting that the defendant's reliance on similarity-based defenses contradicted its validity challenge. However, the court found these inapplicable, as the defendant's alternative pleas were permissible and did not admit similarity.

Detailed Reasoning and Analysis of Judge
Justice Manish Pitale meticulously analyzed the defendant's pleadings, the plaintiff's objections, and the legal framework under Section 124. The court applied the two-step test from Patel Field Marshal, first confirming that paragraphs 18 and 41 explicitly challenged the plaintiff's trademark validity by alleging descriptive use and disclaimer violations. The second step assessed prima facie tenability, adopting the "low threshold prima facie case" test from Lupin Ltd. The court found the defendant's claims arguable, noting that whether "STIMULIV" was descriptive or misused beyond its disclaimer warranted further scrutiny, without delving into merits.

The plaintiff's argument on mutually destructive pleas was rejected, as the court recognized the defendant's right to take alternative defenses. The Division Bench's prior ruling clarified that the defendant never admitted mark similarity, undermining the plaintiff's reliance on R. N. Gosain and Neon Laboratories. The court also dismissed the plaintiff's objection to the defendant's prior rectification petition, aligning with Resilient Innovations and Pepsico to avoid procedural multiplicity. Emphasizing Patel Field Marshal's broader interpretation of Section 124, the court held that the section's heading did not restrict its application to prospective rectification filings. The court concluded that the defendant's pleas were neither false, frivolous, nor untenable, justifying the framing of an issue on the validity of the plaintiff's trademarks.

Final Decision
The Bombay High Court, on April 7, 2025, framed the following issue: "Whether the registration of the trademark ‘STIMULIV' bearing registration No. 297201 in Class 5 and registration of the label mark ‘STIMULIV' bearing registration No. 490598 in Class 5, in the name of the plaintiff, is valid or not?" The suit's proceedings were stayed, allowing the defendant to pursue its existing rectification petition. The court rejected the plaintiff's contentions, affirming the defendant's right to challenge the plaintiff's trademark validity under Section 124.

Law Settled in This Case
This case reinforces the "low threshold prima facie case" test for framing issues under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, requiring only specific pleadings and arguable grounds, not a merits-based inquiry. It clarifies that defendants may raise alternative and mutually inconsistent pleas without undermining a validity challenge, provided no admission of mark similarity exists. The decision also establishes that prior rectification petitions do not preclude Section 124 jurisdiction, with courts favoring procedural efficiency by holding such petitions in abeyance. The ruling underscores the judiciary's role in filtering false or frivolous claims while facilitating legitimate challenges to trademark registrations.

Case Title: Franco India Pharmaceuticals Pvt. Ltd. Vs. Corona Remedies Pvt. Ltd.
Date of Order: April 7, 2025
Case No. Commercial IP Suit No. 105 of 2022
Name of Court: High Court of Bombay
Name of Judge: Manish Pitale, H.J

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539