In
an action for infringement of trademark and passing off, there is general
defence by the defendants that the trademark, over which the plaintiff is claiming
right, is not exclusive property of the plaintiff and that the plaintiff’s
trademark is being used by various parties. The defendant also takes this
defence that the various parties are using the trademark of the plaintiff, how
ever the plaintiff is not taking any action against the third parties. So the
question arises, in case the plaintiff is not taking action against the third
parties/infringers, does this fact dis-entitle the plaintiff from obtaining the
injunction against the defendant. What would
be effect of such defence. This article deals with these defences of the
defendants.
This
question was dealt with by the Hon’ble Supreme Court of India in National Bell Co. & Anr vs Metal Goods Mfg. Co. (P) Ltd 1971 AIR
898, 1971 SCR (1) 70, where by the defendant took the
defence that the subject matter trademark of the plaintiff is being used by
various third parties and that the same is common to trade. The Hon’ble Supreme
Court of India discussed this issue and answered the same in this manner: “This
evidence negatives any abandonment of trade marks or letting infringements go
unchallenged or misleading the other manufacturers that the respondent company
would not interfere it they were to use the same marks. Rights in a mark can,
of course, be abandoned by its owner but so long as he remains the registered
proprietor of the mark and carried on the business to which the mark is
attached, a plea of abandonment is difficult to sustain. It would, however, be
a different matter if it is shown that there, were repeated, undisturbed
infringements. The evidence in the present case does not show that there were
repeated breaches which went unchallenged though known to the proprietor. Mere
neglect to proceed does not necessarily constitute abandonment if it is in
respect of infringements which are not sufficient to affect the distinctiveness
of the mark even if the proprietor is aware of them. (see Re. Farina(1) Where
neglect to challenge infringements is alleged, the character and extent of the
trade of the infringers and their position have to be reckoned in considering
whether the registered proprietor is barred by such neglect. [see Rowland v.
Mitchell(2) ]. The plea of common use must fail, for, to establish it the use
by other persons should be substantial.”
In Coolways
India Vs. Princo Air Conditioning and Refrigeration, PTC (Suppl) (1) 470 (Del): 1993 (1) Arb.LR
401: the
defendant took this defence that a plaintiff himself using usurping or
infringing a third party's registered trade mark is debarred from claiming the
relief of injunction. The Hon’ble High Court of Delhi has dealt with this issue
and laid down the law in this manner , “What has to be seen is whether the
plaintiff has acquired a reputation, goodwill in a mark which he is using in
trading his goods uninterruptedly for quite some time and somebody else is
attempting to pass off his goods under that mark. The contention that a
plaintiff himself using usurping or infringing a third party's registered trade
mark is debarred from claiming the relief of injunction, in my ivew, is a
meritless plea. This a matter between the plaintiff and the party in whose
favour trade mark is registered. Only he can object to it. It is not for a
third person to take up issue for him and claim protection on that score. It is
not disputed by the defendant that no action for infringement of trade mark has been initiated against the
plaintiff by any of the parties, in whose name the said trade mark is claimed
as registered. There is no reason why a person, competing in trade, is allowed
to make use the reputation and goodwill of another person by attaching to his
product a name or description with which he has no natural association”.
In P.M. Diesels Ltd. Vs. S.M. Diesels, 1993- PTC-75 case, the
defendant took the defence that the subject matter trademark is being used by
various parties and that the plaintiff is not taking action against such
infringers. Hence the plaintiff has abandoned right in the subject matter trade
mark. This issue has been dealt with by the Hon’ble Court as , “Next contention raised by learned
counsel for the defendant is that the word Marshal has become common to the
trade of diesel engines in Rajkot and various other persons are using the trade
mark in one form or other as inasmuch as some are using Airmarshal, Perfect
Marshal, Powermarshal etc. and the defendant is not the only person who is
using the trade mark Sonamarshal only. The plaintiff, thereforee, cannot claim
its trade mark to be distinctive of its goods or business and no customer is
likely to be confused or deceived on account of this trade mark. This
contention of the learned counsel for the defendant is also without force. In
this connection it is sufficient to say that under the law it is the right of
two parties before the court which has to be determined and the court has not
to examine the right of other parties. If some other manufacturers are using or
suffixing the word Marshal on their diesel engines, it is of no consequence.
Furthermore, if the plaintiff has not taken any action against several other
infringements, this does not mean that the plaintiff has abandoned its trade
mark and cannot challenge the action of the defendant.”
In
Essel Packaging Ltd. Sridhar Narra & Anr.
2002(25) PTC 233 (Del) case, the Hon’ble Delhi High
Court dealt with the issue of the defendant regarding the third parties user
and answered this question in this way, “Merely because some other parties
or persons are using the name ESSEL does not provide a justification to the
defendants for using the said name as the plaintiff has been using this name
much prior to the adoption of this name by the defendants and its widespread use of this name shows that
this word has become synonymous with the business of the plaintiff and its
group companies.”
In
Express Bottlers
Services Pvt. Ltd. vs. Pepsi Inc. & Ors., 1989 (7) PTC 14 case, the issue of inaction on the part of the plaintiff against the
other infringers came, which was dealt with by the Court in the following
manner: “To establish the plea of common use, the use by other persons
should be shown to be substantial. In the present case, there is no evidence
regarding the extent of the trade carried on by the alleged infringers or their
respective position in the trade. If the proprietor of the mark is expected to
pursue each and every insignificant infringer to save his mark, the business
will come to a standstill. Because there may be occasion when the malicious
persons, just to harass the proprietor may use his mark by way of pinpricks....
The mere use of the name is irrelevant because a registered proprietor is not
expected to go on filing suits or proceedings against infringers who are of no
consequence.... Mere delay in taking
action against the infringers is not sufficient to hold that the registered
proprietor has lost the mark intentionally unless it is positively proved that
delay was due to intentional abandonment of the right over the registered mark.
This court is inclined to accept the submissions of the respondent no. 1 on
this point... The respondent no. 1 did not lose its mark by not proceeding
against insignificant infringers.”
In Pankaj Goel vs.
Dabur India Ltd., 2008(38) PTC 49 (Del) the case, similar question came
before the Division Bench of Hon’ble High Court of Delhi, where in the Hon’ble
Division Bench reasserted the same principle, which is as follow: “As far as
the Appellant's argument that the word MOLA is common to the trade and that
variants of MOLA are available in the market, we find that the appellant has
not been able to prima facie prove that the said infringers' had significant
business turnover or they posed a threat to plaintiff's distinctiveness.
In fact, we are of the view that the respondent/plaintiff is not expected to
sue all small type infringers who may not be affecting respondent/plaintiff's
business. The Supreme Court in National Bell vs. Metal
Goods, AIR 1971 SC 898 has held that
a proprietor of a trademark need not take action against infringement which do not cause prejudice to its
distinctiveness.”
In Anjani Kumar Goenka and Anr. Vs Goenka Institute of
Education and Research: AIR2008Delhi1992, 2008(2)ALD(Cri)547, (2009)ILR
3Delhi758, 2009(39)PTC720(Del) in Para No. 65 of the said Judgment , the
Hon’ble High Court of Delhi observed that As a settled
principle of law, unauthorized or unconsented use by other party is no defense.
In
Dr. Reddy'S Laboratories Ltd. vs Reddy Pharmaceuticals Limited: 2005 128
Comp Case 42 Delhi, 2004 (76) DRJ 616, 2004 (29) PTC 435 Del, the Hon’ble
High Court of Delhi reiterated the same principle that owner of a trademark or
copyright is not required to run after every infringers. The relevant portion
of the said Judgment is being reproduced as here in below: “The
owners of trade marks or copy rights are not expected to run after every
infringer and thereby remain involved in litigation at the cost of their
business time. If the impugned infringement is too trivial or insignificant and
is not capable of harming their business interests, they may overlook and
ignore petty violations till they assume alarming proportions. If a road side Dhaba
puts up a board of "Taj Hotel", the owners of Taj Group are not
expected to swing into action and raise objections forthwith. They can wait
till the time the user of their name starts harming their business interests
and starts misleading and confusing their customers.”
In P RAKASH R OADLINE L TD. V S. P RAKASH P ARCEL S ERVICE (P)
L TD. 48 (1992) DLT 390 : 1992 (22) DRJ 489 rejected the contention of the
Defendant therein that “there were others in the market with similar name
whom the Plaintiff had chosen not to sue by holding that the other parties may
not be affecting the business of the Plaintiff. They may be small time
operators who really do not matter to the Plaintiff. Therefore, the Plaintiff
may not choose to take any action against them. The Court further held that the
mere fact that the Plaintiff has not chosen to take any action against such
other parties cannot disentitle the Plaintiff from taking the present action.”
In 2014 (59) PTC 256 (Del) Indian Hotels Company Limited Versus Ashwajeet
Garg, the Hon’ble High Court of Delhi has laid down
the following principle: “Mere fact that the Plaintiff has not chosen
to take any action against other parties cannot disentitle the Plaintiff from
taking the present action. The other parties may not be affecting the business
of the Plaintiff. They may be small time operators who really do not matter to
the Plaintiff. Therefore, the Plaintiff may choose not to take any action
against them.”
In 2008
(37) PTC 468 (Del) (DB), Indian Hotels Company Limited Versus Jiva Institute of
Vedic Science case, the Hon’ble High Court of Delhi observed “It was also contended by Mr. Rohtagi that since other parties were also
making use of the trade mark Jiva the plaintiff was not entitled to the
injunction prayed for. The decision of this Court in Info Edge (India) Pvt.
Ltd. and Anr. v. Shailesh Gupta and Anr. 2002 (24) PTC 355(Delhi) provides a
complete answer to that submission. The court was in that case also dealing
with a similar argument against the issue of an injunction which was repelled,
holding that the use of the trade mark by some other party against whom the
plaintiffs have not proceeded immediately for seeking an injunction would not
dis-entitle him from seeking an injunction against another party who was
similarly committing a violation.”
In 1998 PTC (18) 698, Indan Shaving Product Limited Vs Gift Product, the Hon’ble High Court of Delhi dealt with the contention of the
defendant as under: “It was next argued by the learned counsel
for the defendant that the said trade mark Ultra is being used by several other
persons/companies besides the defendants such as Toshiba, National and Sony.
Thus the same has become publici juris and the plaintiffs can not claim any
exclusive right therein. Admittedly, the said parties are not before this
Court. Neither the said parties are claiming any relief against the plaintiffs
nor the plaintiffs are claiming any relief against them. Hence the said
defense, that other persons are also using the said trade mark, is not available
to the defendants. The Court is called upon to decide disputes in between the
parties which are before it. The Court cannot be expected to adjudicate upon a
dispute which is not before it. A matter very much akin to the matter in hand
came up before a single Judge of this Court.”
In
Amrit Soap Company Vs. New Punjab Soap Factory,
1989(2) Arbitration Law Reporter 242, the Hon’ble High
Court of Delhi answered this aspect in this manner, "The allegation
that some other manufacturers are also using the same trade mark is of no
consequence as the Court is concerned with parties before it only."
In 2016(68)PTC37(Cal),
Assam Roofing Ltd. Vs JSB Cement LLP, the Hon’ble High Court of Kolkata returned the
following finding, “It is a settled legal position
that the use of a registered mark or the essential feature thereof by others is
not a defence available to the Defendant in an action for infringement and
passing off. Merely because the Plaintiff has chosen to sue one infringer first
and has not at such time sued others for infringement is also no defence in an
action for infringement and passing off and it is settled law that it is the
prerogative of the Plaintiff/registered proprietor/owner of a mark whom to sue
so as to protect its rights.”
After
going through all the afore mentioned different Judgments as laid down by the
Hon’ble Supreme Court of India and Hon’ble High Court , the principle which
emerges is that use of the trademark of the plaintiff by the third parties , is
no defence in an action for infringement of trademark and passing off. The
plaintiff is not required to run after every infringers. In action on the part
of the plaintiff in taking action against other infringers, does not entitle
the defendants to use the trademark of the plaintiff. What the court is
required to see, is the list between the contesting parties. The Court has to
see the respective rights and user of the contesting parties. The court is not
required to see the rights of the third parties. The plaintiff’s inaction against
other infringers does not mean abandonment of the trade mark. The plaintiff can wait . till it feels that
third party user is damaging its right. The defendant can not say that
plaintiff can not allege right in the trademark, as other parties are using the
plaintiff’s registered trademark and that plaintiff is not taking any action.
This defense of the defendant is of no help.
AJAY AMITABH SUMAN, ADVOCATE
DELHI HIGH COURT
