Brief Facts
Yogi Ayurvedic Products Pvt. Ltd. filed a suit against Vaishali Industries alleging trademark infringement and passing off concerning the mark "YOGI." The plaintiff claimed to have proprietary rights over the trademark "YOGI" since 1999, with registered trademarks under Classes 3 and 5. The plaintiff argued that the defendant's use of the identical mark for similar products would lead to consumer confusion and dilution of its brand. An ex-parte ad-interim injunction was granted in favor of the plaintiff, which the defendant later sought to vacate by invoking Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, on the ground that false and misleading statements were made while obtaining the injunction.
Issues
The key issues before the court were whether the defendant had established a valid claim of prior use under Section 34 of the Trade Marks Act, 1999, whether the absence of a written assignment deed affected the defendant’s claim, and whether the ex-parte ad-interim injunction granted to the plaintiff should be vacated.
Submissions of Parties
The plaintiff contended that it had continuously and commercially used the "YOGI" trademark since 1999 and had obtained registrations under Classes 3 and 5. It argued that the defendant failed to demonstrate continuous prior use of the mark and had no legal basis to claim ownership. The plaintiff also pointed out that the defendant lacked a written assignment deed transferring rights from its alleged predecessor, as required under the Trade Marks Act.
The defendant, in response, argued that it had been using the "YOGI" trademark since at least 1997 through its predecessor, M/s. D.V. Deo Aromatics Pvt. Ltd. It asserted that the trademark rights were transferred to the defendant through a family arrangement, despite the absence of a formal assignment deed. The defendant also claimed that it had been continuously using the mark and placed reliance on invoices and other documents.
Reasoning and Analysis of Judge
The court analyzed the defendant’s claim of prior use and found it lacking in legal substance. It noted that Section 34 of the Trade Marks Act requires continuous use of a mark and, where applicable, a written assignment for transferring trademark rights. The court specifically emphasized that under Section 2(1)(b) of the Trade Marks Act, 1999, any assignment of a trademark must be in writing. Since the defendant failed to produce any written document assigning the trademark from its alleged predecessor, its claim of prior use was legally untenable. The court further noted that the absence of a written assignment deed broke the chain of ownership, meaning the defendant could not claim that its use of the mark stemmed from the predecessor company.
The court also highlighted that mere isolated instances of use, such as two invoices from 1997, were insufficient to establish continuous commercial use. Additionally, it observed that the defendant’s argument that a family arrangement could serve as an implied assignment was flawed, as trademark law mandates that assignments be documented in writing.
The court found no merit in the defendant’s argument that the injunction was obtained through misleading statements. It held that the plaintiff had provided sufficient documentary evidence, including registration certificates, invoices, and sales figures, to demonstrate its longstanding use of the "YOGI" mark. The court noted that the defendant's use of an identical mark for similar products could lead to consumer confusion and dilution of the plaintiff’s brand.
Decision of Judge
The court rejected the defendant's plea to vacate the injunction and confirmed the ex-parte ad-interim relief granted to the plaintiff. It ruled that the defendant had failed to establish prior continuous use under Section 34 of the Trade Marks Act and that the absence of a written assignment deed was fatal to its claim. The application was allowed, and the injunction against the defendant’s use of the mark was made permanent.
