Carlton Shoes Limited Vs VIP Industries Limited

Remedy of Trademark Infringement against another registered proprietor

Introduction:

Trademark disputes often arise when two parties claim ownership of the same or similar trademarks for identical or closely related goods. In such cases, the fundamental question that emerges is whether one registered proprietor of a trademark can sue another registered proprietor for infringement. This legal conundrum was recently addressed by the Hon'ble High Court of Delhi in a case involving Carlton and VIP Industries, both claiming to be registered proprietors of the trademark "CARLTON." This article delves into the intricacies of the case and the court's insightful interpretation of the law.

The Parties and Their Trademarks:

The dispute revolved around the trademark "CARLTON" and its use in relation to Class 18 products, such as leather goods, trunks, and travel bags. Carlton London, one of the litigants, applied for the registration of the word mark "CARLTON" in India on May 6, 1994, specifically for Class 18 goods, and successfully obtained registration. VIP Industries, on the other hand, acquired the "CARLTON" marks, along with the associated goodwill, from Carlton International PLC through an Assignment Agreement dated March 25, 2004, and subsequently secured registration for the "CARLTON" mark in Class 18 on April 21, 2006.

The Legal Question:

With both parties holding registrations for the same trademark, the pivotal legal issue arose: can one registered proprietor of a trademark sue another registered proprietor for trademark infringement? This question hinged on the interpretation of Section 28(3) of the Indian Trademarks Act.

Section 28(3) of the Indian Trademarks Act 1999

Section 28(3) of the Indian Trademarks Act deals with situations where two or more persons are registered proprietors of trademarks that are identical or closely resemble each other, provided these trademarks are registered for similar goods. The question of exclusive rights to use these trademarks against each other arises in such cases. The central query is whether the act of registration automatically grants one registered proprietor the exclusive right to sue the other for infringement.

The Legal Interpretation:

The Hon'ble High Court of Delhi, in addressing this legal issue, turned to a key precedent, the judgment of the Hon'ble Supreme Court of India in the case of S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683. In this landmark decision, the Supreme Court provided significant guidance on the interpretation of Section 28(3) of the Trademarks Act.

The Supreme Court, in its judgment, clarified that when two or more persons are registered proprietors of trademarks that are identical or nearly resemble each other, and these trademarks are registered for similar goods, the exclusive right to use these trademarks shall not be deemed to have been acquired by one registered proprietor against the other, merely on account of registration. In essence, registration does not confer the right to sue for infringement in cases where registered proprietors hold similar trademarks for similar goods.

The High Court's Decision:

Building upon the Supreme Court's interpretation of Section 28(3), the Hon'ble High Court of Delhi concluded that in the case of Carlton and VIP Industries, both of whom were registered proprietors of the trademark "CARLTON" for Class 18 goods, neither party could assert an exclusive right to sue the other for trademark infringement.

The court's decision, therefore, affirmed that both Carlton and VIP Industries could not allege infringement of their registered trademarks "CARLTON" against each other. This interpretation aligns with the overarching objective of trademark law, which seeks to protect the interests of registered proprietors while also fostering competition and consumer choice.

The concluding Note:

The case of Carlton and VIP Industries underscores the importance of a nuanced understanding of trademark law, particularly concerning the rights and limitations of registered proprietors against another one. The interpretation of Section 28(3) by the Hon'ble High Court of Delhi, in line with the Supreme Court's guidance, reaffirms that the mere act of registration does not grant one registered proprietor the exclusive right to sue another for trademark infringement when the trademarks and goods in question are similar.

Case Law Discussed:

Date of Judgement:17/07/2019

Case No. Co Comm 730 of 2019

Neutral Citation No: 2023:DHC:4865

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Jyoti Singh

Case Title:Carlton Shoes Limited Vs VIP Industries Limited

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Anubhav Jain Vs Satish Kumar Jain: C Hari Shankar, H.J.

Harmonizing Sections 124 and 57 of the Trademarks Act 1999

Introduction:

The interplay between Sections 124 and 57 of the Trademarks Act 1999 has long been a subject of legal debate in India. Specifically, the question arises as to whether Section 124, which mandates obtaining leave from the court before challenging the validity of a registered trademark, operates to bar the initiation of rectification petitions under Section 57 independently. This article analyzes a recent judgment by the Hon'ble High Court of Delhi, which provides crucial insights into the compatibility of these provisions.

Section 124 of Trademarks Act 1999:

Section 124 of the Trademarks Act 1999 prescribes the requirement for obtaining leave from the court when challenging the validity of a registered trademark in a suit. It serves as a protective mechanism for registered trademark holders and prevents frivolous challenges to the validity of their marks.

Section 57 of Trademarks Act 1999:

On the other hand, Section 57 of the same Act allows for the initiation of rectification proceedings for the cancellation of a registered trademark independently of any pending suit. This provision empowers interested parties to seek rectification of the register based on various grounds, including the invalidity of the trademark.

The Case at Hand:

In a recent case before the Hon'ble High Court of Delhi, the petitioner, Mr. Anubhav Jain, filed a cancellation petition under Section 57 and Section 125 of the Trademarks Act 1999, seeking the cancellation of Certificate No. 2772286 dated 18th June 2021. Notably, Mr. Jain did not seek leave under Section 124 before initiating the rectification proceedings.

The Respondent's Contention:

The respondent, in response to rectification petition, raised a preliminary objection based on Section 124 of the Trademarks Act. Citing the Supreme Court's judgment in Patel Field Marshal Agencies v. P.M. Diesels Ltd (2018) 2 SCC 112, the respondent contended that once a suit for infringement is filed by the plaintiff against the defendant, and the defendant raises the plea of invalidity of the plaintiff's mark as a ground of defense, the defendant forfeits the right to independently invoke Section 57 to seek rectification and cancellation of the plaintiff's mark.

The Court's Interpretation:

The Hon'ble High Court of Delhi, in its judgment, rejected the respondent's interpretation of the law. The court made several noteworthy observations to clarify the relationship between Sections 124 and 57 of the Trademarks Act 1999.

Firstly, the court emphasized that the decision in Patel Field Marshal Agencies did not conclusively establish that the right to seek cancellation of a mark under Section 57 and the right to seek rectification under Clause (ii) of the second part of Section 124 are mutually destructive to each other.

The court held that the right to seek cancellation and rectification, as conferred by Section 57 and Clause (ii) of the second part of Section 124, respectively, are independent rights. Therefore, an interested party retains the right to invoke either or both of these provisions, even in the absence of leave obtained under Section 124.

The Concluding Note:

The judgment of the Hon'ble High Court of Delhi provides a significant clarification on the relationship between Sections 124 and 57 of the Trademarks Act 1999. It highlights that these provisions operate independently, allowing interested parties to initiate rectification proceedings under Section 57 without being barred by the absence of leave obtained under Section 124.

Case Law Discussed:

Date of Judgement:09/01/2023

Case No. Co Comm IPD TM 55 of 2021

Neutral Citation No: 2023:DHC:7089-DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge:C Hari Shankar

Case Title:Anubhav Jain Vs Satish Kumar Jain

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Aviral Education Welfare and Cultural Society Vs The Delhi Public School Society

Writ is maintainable only for an action which fall in realm of public law

Introduction:

The question of whether a writ petition can be maintained under Article 226 of the Indian Constitution hinges on whether the dispute in question falls within the purview of public law. In the case at hand, the Delhi Public School Society [DPSS] and Aviral Education Welfare and Cultural Society [AEWCS] are embroiled in a contractual dispute pertaining to the termination of a Joint Venture Agreement [JVA] for the establishment of an English medium school under the name "Delhi Public School: DPS." This article aims to analyze the judicial perspective on the maintainability of writ petitions in contractual disputes, specifically in light of the DPSS and AEWCS case.

The Background:

The dispute arose when DPSS issued a notice on 24 September 2018, informing AEWCS of the termination of the JVA effective 01 April 2019. Furthermore, DPSS warned AEWCS against using the name/logo "Delhi Public School" or "DPS" in any manner after the termination. Subsequently, DPSS initiated a civil suit seeking a permanent injunction against AEWCS for trademark infringement, resulting in an interim injunction being granted on 10 March 2023. It is noteworthy that the Single Judge, while granting the interim injunction, opined that the JVA did not possess a public law character, casting doubts on the maintainability of the writ petition filed by AEWCS.

Public Law vs. Private Law:

The crux of the issue revolves around the demarcation between public law and private law. In India, writ jurisdiction under Article 226 of the Constitution is primarily invoked to protect fundamental rights and enforce public law obligations. Public law deals with the relationship between the State and individuals concerning matters of public interest, while private law governs relations between individuals or entities in matters of private interest.

Judicial Pronouncements:

In the case at hand, the Division Bench observed that the dispute between DPSS and AEWCS pertained to individual rights and obligations arising from a contractual relationship. This characterization placed the matter squarely within the realm of private law. Consequently, the Bench held that the dispute did not possess the public law character required for the maintainability of a writ petition under Article 226.

This position finds support in several judicial precedents. The Indian judiciary has consistently held that writ jurisdiction should not be invoked in contractual disputes unless the actions complained of involve a violation of fundamental rights or public law obligations. In the absence of a public law element, the courts are generally reluctant to entertain writ petitions.

Implications:

The Delhi Public School Society and Aviral Education Welfare and Cultural Society case underscores the importance of differentiating between public law and private law disputes when considering the maintainability of writ petitions under Article 226 of the Constitution. It highlights the principle that the writ jurisdiction should be reserved for cases involving issues of public interest.

The Concluding Note:

The decision of the Division Bench reaffirms the need for a clear public law element in disputes to invoke the extraordinary jurisdiction of the writ courts. This case serves as a reminder that contractual disputes, unless intertwined with public law obligations , should be pursued through civil remedies rather than resorting to writ petitions under Article 226.

Case Law Discussed:

Date of Judgement:21/09/2023

Case No. FAO OS Comm 69 of 2023

Neutral Citation No: 2023:DHC:7089-DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma

Case Title:Aviral Education Welfare and Cultural Society Vs The Delhi Public School Society

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Hasmukhbhai Bhagwanbhai Patel Vs Husenali Anwarali

Territorial Jurisdiction in Trademark Suits on the basis of sale at a particular place

Introduction:

The recent case in question involves a plaintiff seeking to stop the use of the trademark "KRANTI KAKA" in connection with betel nuts, filed under the Trademarks Act of 1999 and the Copyright Act of 1957. The territorial jurisdiction of court was invoked on the basis of sale. The defendant, on the other hand, contested the jurisdiction of the court based on the location of their businesses and the alleged infringement within the district. This article provides an analytical overview of the case and discusses the principles surrounding territorial jurisdiction in trademark suits.

Background of the Case:

In this case, the appellant is the plaintiff, and the respondent is the defendant. The crux of the matter revolves around the rejection of the plaintiff's complaint by the Ld. Additional District Judge (A DJ) in Dahod, citing a lack of jurisdiction under Order 7 Rule 11 of the Code of Civil Procedure (CPC). The lawsuit primarily sought a permanent injunction, profit accounts, and damages against the unauthorized use of the trademark "KRANTI KAKA" in connection with betel nuts.

Key Jurisdictional Disputes:

The central dispute in this case arises from the geographical locations of both the plaintiff and the defendant. Neither party was a resident of Dahod, where the case was filed. The plaintiff conducted their business operations for profit in Surat, while the defendant claimed that submitting invoices from either party did not establish the cause of action.

The Legal Principle:

The court adhered to a well-established legal principle when analyzing the jurisdictional aspect of the case. It stated that the defendant's plea, whether in their written statement or an application under Order 7 Rule 11 of the CPC, is irrelevant in determining jurisdiction. 

The Court's Decision:

Despite the plaintiff residing in Surat and owning a factory in the Surat district, and the defendant conducting business in Moraiya and Ahmedabad while residing in Wadhwan, the suit was filed in Dahod. The plaintiff argued that part of the cause of action arose within the territorial jurisdiction of the Dahod District Court on the basis of sale of product at Dahod. 

However, the court found that the defendant did not produce, market, or process betel nuts within the boundaries of the Dahod District Court. The plaintiff relied on invoices allegedly extracted from the Trademark Registry website to establish territorial jurisdiction, but the court dismissed this interpretation, deeming it an abuse of the law.

The Concluding Note:

The case at hand underscores that the mere sale of goods at a particular place, without a substantial connection to the cause of action, cannot be the sole basis for invoking territorial jurisdiction. The court's decision in this matter upholds established legal principles and ensures that trademark suits are filed in relevant and appropriate jurisdictions, preventing potential abuse of the law.

Case Law Discussed:

Date of Judgement:25/09/2023

Case No. R/FIRST APPEAL NO. 2172 of 2023

Neutral Citation No: N. A. 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: J C DoshiH.J.

Case Title:Hasmukhbhai Bhagwanbhai Patel Vs Husenali Anwarali

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

VBM Medizintechnik GMBH Vs Geetan Luthra

Bonafide adopter of trademark and Defense of Acquiescence under Section 33 of the Trademarks Act 1999

Introduction:

In the case at hand, a German-based medical equipment company, "the Plaintiff," initiated legal action against an Indian entity, "the Defendant," for passing off under the Trademarks Act 1999. The Defendant attempted to invoke the defense of acquiescence under Section 33 of the Trademarks Act, arguing that the Plaintiff had acquiesced to their use of the trademark "VBM." This article critically analyzes the court's decision to deny the defense of acquiescence to the Defendant on the grounds that it was not a bona fide adopter of the trademark.

Factual Background:

The Plaintiff, an established German company, had been using the trademark "VBM" for its medical equipment since 1981. Despite not having an Indian registration, the Plaintiff had a distributor in India who happened to be the father of the Defendant. The Defendant claimed to have been using the domain name www.vdmmedial.com since 2008 and subsequently secured the trademark registration for "VBM" in India in 2015.

In 2020, the Plaintiff terminated its distributor agreement with the Defendant and filed a complaint for passing off, asserting that the Defendant's use of the trademark "VBM" was infringing upon its rights. In response, the Defendant invoked the defense of acquiescence under Section 33 of the Trademarks Act 1999.

Analysis of the Court's Decision:

The central issue in this case revolves around the applicability of the defense of acquiescence under Section 33 of the Trademarks Act 1999. Section 33 of the Act provides protection to a person who has been using a trademark continuously for a certain period, despite knowing of another person's prior use of a similar or identical trademark. To successfully invoke this defense, it is essential that the Defendant has to establish themselves as a bona fide adopter of the trademark.

The court, in its analysis, rightly considered several factors before determining whether the Defendant was a bona fide adopter of the trademark "VBM." These factors include the visual similarity between the Plaintiff's and Defendant's marks, the timing of the Defendant's trademark registration, and the circumstances surrounding the Defendant's adoption and use of the mark.

Visual Similarity:

The court observed that the Defendant's adoption of a mark with such a striking visual similarity to the Plaintiff's mark could not be dismissed as mere coincidence. The visual similarity between the marks "VBM" and "VDM" could potentially lead to consumer confusion, which is precisely what trademark law aims to prevent.

Not a Bona Fide Adoption:

The court concluded that the Defendant had not secured the registration of the mark in a bona fide manner. In other words, the Defendant's actions, particularly the timing of the trademark application, indicated that they may not have adopted the mark "VBM" with honest and legitimate intentions.

The Concluding Note:

The court's decision to deny the Defendant the protection of the defense of acquiescence under Section 33 of the Trademarks Act 1999 is a well-reasoned one. The court rightly recognized that this defense should only be available to genuine adopters of a trademark who have used it continuously with good faith.

In this case, the Defendant's adoption of a visually similar mark, the timing of the trademark registration, and the circumstances surrounding the adoption of the mark all cast doubt on the Defendant's bona fides. Therefore, the court's refusal to protect the Defendant's use of the trademark "VBM" under the defense of acquiescence is a correct application of the law, preserving the integrity of trademark rights and preventing potential consumer confusion.

Case Law Discussed:

Date of Judgement:25/09/2023

Case No. CS Comm 820 of 2022

Neutral Citation No: 2023:DHC:7014

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar H.J.

Case Title:VBM Medizintechnik GMBH Vs Geetan Luthra

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Black Diamond Track Parts Vs Black Diamond Motor

Maintainability of Petition under Article 227 of the Constitution of India before Commercial Bench

Introduction:

The question of whether a petition under Article 227 of the Indian Constitution can be heard by a Commercial Court of a High Court was  addressed by the Division Bench of the Delhi High Court. This issue arose in response to a judgment made by the Learned Additional District Judge (ADJ) on September 25, 2021, wherein an application under Order 7 Rule 11 of the Code of Civil Procedure, 1908 (CPC) was dismissed, and no appeal was available under Order 43 Rule 1 CPC. Consequently, the aggrieved party sought recourse under Article 227.

Section 8 of the Commercial Courts Act posed a challenge to this situation, as it explicitly prohibits revision applications or petitions against interlocutory orders. Thus, the central question was whether a petition under Article 227 could be maintained concerning proceedings in a commercial suit before the District Judge (Commercial), given the prohibition under the Commercial Courts Act.

Analysis:

1. Alternative Remedy and Discretionary Nature of Article 227:

The Division Bench noted that a petition under Article 227 of the Constitution of India is a discretionary remedy and is typically not exercised when an alternative remedy is available under the CPC. In this context, it's essential to highlight that the remedy of revision under Section 115 of the CPC, which would have been available against the dismissal of an application under Order 7 Rule 11 CPC, had been eliminated by the Commercial Courts Act.

2. Scope and Ambit of Article 227:

One of the critical aspects considered by the Division Bench was the scope and ambit of a petition under Article 227 compared to a revision application under Section 115 of the CPC. It was observed that the powers conferred by Article 227 are broader in scope than those of Section 115 of the CPC. Essentially, anything that could be done under Section 115 could also be done under Article 227. This led to the conclusion that petitions under Article 227 could be preferred even against orders for which a revision application under Section 115 CPC would have been maintainable.

3. Commercial Courts Act and Article 227:

 

The main contention was whether the Commercial Courts Act completely barred the jurisdiction under Article 227 in cases where a revision application under CPC had been rendered unavailable due to the Act. The Division Bench, while acknowledging that the Commercial Courts Act limited certain remedies, held that Article 227's jurisdiction should not be entirely precluded. Therefore, the Division Bench ruled that a petition under Article 227 was maintainable in the context of a dismissal of an Order 7 Rule 11 application, even if the Commercial Courts Act had eliminated the revision remedy.

The Concluding Note:

In the case before the Delhi High Court's Division Bench, it was established that the Commercial Courts Act's restrictions on certain remedies did not entirely bar the exercise of jurisdiction under Article 227 of the Constitution of India. The decision highlighted the discretionary nature of Article 227, its broader scope compared to Section 115 of the CPC, and the importance of maintaining access to justice even in the context of commercial suits. Ultimately, the petition under Article 227 was deemed maintainable in this case, allowing the aggrieved party to seek redress against the dismissal of their application under Order 7 Rule 11 CPC. 

Case Law Discussed:

Date of Judgement:25/05/2021

Case No. FAO (COMM) 41/2021

Neutral Citation No: N.A.

Name of Hon'ble Court:Delhi High Court

Name of Hon'ble Judge: Rajiv Sahai Endlaw and Amit Bansal. H.J.

Case Title:Black Diamond Track Parts Vs Black Diamond Motor

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Ornate Jewels Vs Wow Overseas Private Limited

The Binding Effect of Statements Made Before the Registrar of Trademarks

Introduction:

The case in question revolves around the binding effect of statements made by the plaintiff before the Registrar of Trademarks in response to an examination report. The plaintiff, who sought to protect the trademark "ORNATE JEWELS" in the jewelry industry, faced a legal hurdle when the defendant claimed a similar trademark. The crux of the matter lies in the plaintiff's response to the Registrar of Trademarks' objection regarding the similarity of trademarks and its subsequent impact on the plaintiff's legal position.

Background:

The plaintiff asserted its use of the trademark "ORNATE JEWELS" for Gold Diamond, Precious and Semi-Precious Jewelry since 2012. The plaintiff also held a registered trademark with a logo in Class 35 before the Registrar of Trademarks in 2018. Conversely, the defendant argued that it had been using the same trademark, "ORNATE JEWELS," in the same industry but with a distinct logo. The defendant's trademark had been registered with the Registrar of Trademarks in Class 14 since 2016.

The Registrar's Objection:

The pivotal moment in this legal battle occurred when the Registrar of Trademarks raised an objection to the plaintiff's registration application. The objection was grounded in the fact that the defendant had already registered a trademark with a similar name in 2016. The plaintiff, however, countered this objection by asserting that the defendant's trademark was entirely different and dissimilar, bearing Registration No. 3256088.

The High Court's Ruling:

The Rajasthan High Court upheld the Trial Court's decision, denying the plaintiff's claim for a temporary injunction. The crux of their reasoning hinged upon the plaintiff's response to the Registrar of Trademarks' objection regarding the similarity of trademarks. The High Court concurred with the Trial Court's observation that the plaintiff's response before the Registrar of Trademarks estopped them from taking a contradictory position now. In essence, the plaintiff's previous statement, asserting dissimilarity, held them legally bound and precluded them from subsequently claiming similarity, which would be at odds with their earlier stance before the Registrar of Trademarks.

Analysis:

The case underscores the importance of consistency in legal proceedings, particularly in matters related to trademark registration and protection. When a party makes a statement before a competent authority, such as the Registrar of Trademarks, it carries a significant legal weight. In this instance, the plaintiff's initial assertion that the defendant's trademark was dissimilar, made during the registration process, formed the basis for their subsequent legal challenges.

Doctrine of Estoppel:

The doctrine of estoppel is central to this case. Estoppel prevents a party from adopting a position that contradicts their prior statements or conduct when it would be unjust or inequitable to do so. The plaintiff's assertion of dissimilarity before the Registrar of Trademarks created a legitimate expectation that they would maintain this position. To allow the plaintiff to subsequently claim similarity would not only undermine the integrity of the registration process but also lead to unjust results for the defendant.

The Concluding Note:

This case serves as a poignant reminder of the binding effect of statements made before the Registrar of Trademarks in response to examination reports. Parties must exercise caution and consistency in their statements during trademark registration, as these statements can significantly impact their legal positions in subsequent disputes. 

Case Law Discussed:

Date of Judgement:18/09/2023

Case No. S.B. Civil Miscellaneous Appeal No. 1570/2021

Neutral Citation No: N.A.

Name of Hon'ble Court:Rajasthan High Court

Name of Hon'ble Judge: Sudesh Bansal.H.J.

Case Title:Ornate Jewels  Vs Wow Overseas Private Limited

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Giorgio Armani Vs Smart Collection

Beneficiary Test in Co-Branding Cases and Ban on Export or Import

Introduction:

In the legal case involving the plaintiff's ownership rights to the trademarks "ARMANI" and "GIORGIO ARMANI" against the defendants' use of these marks in connection with their brand "SMART COLLECTION," several critical legal issues were brought to the forefront. This article aims to provide a detailed analysis of the application of the "beneficiary test" in cases of co-branding through online promotion and advertising, as well as the implications of the court's directive to inform Customs Authorities for preventing the import or export of counterfeit goods.

Ownership Rights and Trademark Infringement:

The plaintiff's claim of ownership rights to the trademarks "ARMANI" and "GIORGIO ARMANI" in various product categories was uncontested by the defendants. The core issue at hand was the defendants' use of these trademarks alongside their brand "SMART COLLECTION," which raised concerns of trademark infringement. The court ruled in favor of the plaintiff, emphasizing that the use of these marks alongside "SMART COLLECTION" amounted to an abuse of the plaintiff's trademarks.

Co-Branding and the Unlawful Use of Trademarks:

One crucial aspect of this case was the defendants' attempt to co-brand their products using the plaintiff's trademarks along with their own "SMART COLLECTION" mark. Co-branding, in essence, involves combining two established brands to create a new product or line of products. However, the court made it clear that even with co-branding, the unauthorized use of another entity's trademarks is prohibited and unlawful.

The Beneficiary Test in Co-Branding Cases:

One significant development in this case was the court's recognition of the "beneficiary test" as a crucial factor in determining liability in cases of co-branding through online promotion and advertising. The beneficiary test, in essence, seeks to identify who ultimately benefits from the use of the contested trademarks. In this case, the court reasoned that the party directly responsible for creating or facilitating the online promotion and advertising would be the one benefiting.

The application of the beneficiary test is particularly relevant in the digital age, where online promotion and advertising can involve multiple parties and intermediaries. By identifying the primary beneficiary, the court aimed to hold those responsible for the infringement accountable. In this case, it was clear that only the defendants would benefit from the use and marketing of the plaintiff's trademarks in conjunction with "SMART COLLECTION."

Preventing Import or Export of Counterfeit Goods:

The court's directive for the plaintiff to inform Customs Authorities about the decision serves a vital purpose in the protection of trademark rights. Counterfeit goods bearing well-known trademarks like "ARMANI" and "GIORGIO ARMANI" can flood international markets, causing significant harm to the genuine trademark owner's reputation and revenues.

By alerting Customs Authorities, the court took a proactive approach to prevent the import or export of counterfeit goods. This directive not only upholds the rights of the trademark owner but also contributes to the broader goal of combating intellectual property infringement and protecting consumers from counterfeit products.

The Concluding Note:

The legal case involving the trademarks "ARMANI" and "GIORGIO ARMANI" and their unauthorized use in co-branding by the defendants sheds light on several crucial legal principles. The application of the beneficiary test in co-branding cases through online promotion and advertising highlights the need for accountability in the digital age.

Additionally, the court's directive to inform Customs Authorities demonstrates a commitment to safeguarding trademark rights and combating counterfeit goods. In sum, this case underscores the importance of upholding trademark protection in an evolving commercial landscape, where co-branding and online marketing play pivotal roles. 

Case Law Discussed:

Date of Judgement:25/07/2018

Case No. CS (COMM) 208/2018

Neutral Citation No: N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh H.J.

Case Title:Giorgio Armani Vs Smart Collection

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539