Author: Bhavya
In the matter of Naga Limited Vs. Cherukuri Gopi Chand [2025:MHC:1728], a Single Judge [Senthilkumar Ramamoorthy, J.] of the High Court of Madras, vide judgment dated July 16, 2025, allowing an application for summary judgment, held that statements made in Notices of Opposition do not constitute groundless threats of legal proceedings.
Section 142(1) of the Trade Marks Act, 1999 (“the Act”) states that “Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark….a person aggrieved may….bring a suit….and may obtain a declaration to the effect that the threats are unjustifiable…”. The key legal issue in this case was whether statements made in a Notice of Opposition in trademark opposition proceedings constituted groundless threats of legal proceedings under Section 142(1) of the Act.
The Respondent asserted that the expression “or otherwise” in Section 142(1), which follows the words ‘circulars’ and ‘advertisements’, should be given a broad interpretation and not be confined to public communications. The Respondent further argued that the statements made in Notices of Opposition, including allegations of infringement and intimation of proceedings under Sections 102 and 103 of the Act, constituted threats. The Appellant however, contended that the Respondent’s suit is entirely founded on Notices of Opposition filed by the Appellant. Consequently, by filing these Notices of Opposition, the Appellant argues that legal proceedings have been initiated, and therefore, such actions cannot be construed as threats under Section 142(1).
Accepting the contentions of the Appellant, the Court held that “Although the expression “or otherwise” in Section 142(1) covers all forms or modes of communication of a baseless or unjustified threat of initiation of infringement or like proceedings, statements made by a party…in pleadings in legal proceedings cannot be construed as threats for purposes of initiating such proceedings. As a corollary, they do not fall within the scope of Section 142(1). While such proceedings are pending, as stated earlier, the adjudicating authority would be the sole judge of pleadings in such proceedings.”
Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.
Copyright: ALG India Law Offices LLP