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August 27, 2024

Legal Issues Seminar-General IP (LIS-GIP) On “Whether Prosecution History Estoppel Bars A Party From Taking A Contrary Stand In A Trademark Infringement Suit?”

Featuring: Atul Bhatt

A ‘Legal Issues Seminar- General IP’ (LIS-GIP) was conducted by Atul Bhatt, Associate, on “Whether prosecution history estoppel bars a party from taking a contrary stand in a trademark infringement suit?”. The seminar discussed the principle of ‘estoppel’ with relevant statutory provisions under the Bharatiya Sakshya Adhiniyam, 2023 to determine whether a party can take a position in an infringement suit, which is contrary to the assertions made by them before the Trademark Registry.  

The session analysed various judgments discussing the concept of prosecution history estoppel, its relevancy and impact on the party claiming infringement at a subsequent stage. The members also exchanged their views on whether a party should be allowed to shift their stance in a court proceeding or should they necessarily be bound with their statements made before the Trademark Registry. 

The session concluded with a discussion on the importance of exercising caution while making submissions before the TM Registry, given the risk that comes with advancing contrary submissions before a Court of Law.  

The presentation can be accessed here.

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