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
Mob No: 9990389539
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