Amrish Aggarwal Vs Venus Home Appliances

Leave of Court under Section 124 of Trademarks Act 1999, Post Filing of Rectification Petition

Introduction:

The interplay between the Trademarks Act of 1999 and the legal procedures governing trademark disputes often raises complex questions. One such question, which came before the Hon'ble High Court of Delhi, pertains to the timing of filing a rectification petition and the necessity of obtaining leave of court under Section 124(1)(ii) of the Trademarks Act. This article delves into the recent judgment of the Delhi High Court in the context of TM 1111/2016 and examines the implications of filing a rectification petition before the court addresses the validity of the defendant's mark.

Background:

In TM 1111/2016, the plaintiff alleged trademark infringement by the defendant with respect to the VENUS trademark. The defendant responded by questioning the validity of the VENUS mark in a written statement. As per Section 124(1)(ii), proceedings must be delayed for three months to allow the court to determine the validity of the trademark in question.

The Controversy:

However, in an interesting turn of events, the defendant filed a rectification petition before it obtained the leave of Court under Section 124 of Trademarks Act 1999. This action prompted a legal debate on whether such a rectification petition, filed prior to the court framing any issues related to the trademark's validity, should be deemed maintainable.

The Precedent:

The petitioner relied on a Division Bench decision of the Delhi High Court in (2010) 43 PTC 479, titled "Puma Stationer P. Ltd. Vs. Hindustan Pencil Ltd." In this case, the court approved the earlier decision in AIR 1985 Del 258, "Elofic Industries (India) Vs. Steel Bird Industries." Notably, in these cases, the rectification petition was filed simultaneously with a written statement before any issue regarding trademark validity was framed.

The Delhi High Court's Ruling:

The Hon'ble High Court of Delhi, in light of the Puma Stationer Division Bench judgment, held that the rectification petition cannot be dismissed as not maintainable solely because it was filed before the court framed any issues regarding the validity of the VENUS mark. 

The Concluding Note:

The court there fore, by necessary implication, ruled that leave under Section 124 of the Trademarks Act 1999 can be obtained after filing a rectification petition as well, and a rectification petition cannot be denied solely on the basis that such leave was not obtained prior to filing.

Case Law Discussed:

Date of Judgement:27/09/2023

Case No. C.O. (COMM.IPD-TM) 258/2022

Neutral Citation No: 2023:DHC:7127

Name of Hon'ble Court: High Court of Delhi

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

Case Title:Amrish Aggarwal Vs Venus Home Appliances

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 

Star India Pvt. Ltd. Vs Jio Live TV

Rogue Websites and Dynamic Injunction

Introduction:

The recent lawsuit concerning the ICC Men's Cricket World Cup 2023 has raised critical legal issues surrounding the protection of exclusive media rights in the digital age. The Plaintiffs, who hold exclusive global media rights for various ICC events, including the World Cup 2023, have sought legal recourse against the unlawful dissemination and broadcast of matches by rogue websites. This article delves into the legal implications of this case, focusing on the application of dynamic injunctions to safeguard intellectual property rights in the ever-evolving landscape of online piracy.

Background:

The Plaintiffs' claim to exclusive global media rights, which encompass broadcast and digital rights, stems from an agreement dated November 20, 2014, spanning an eight-year period from 2015 to 2023. With the ICC World Cup 2023 on the horizon, concerns have arisen regarding the rampant proliferation of rogue websites that may illegally transmit and broadcast matches or parts thereof to the public. Given the event's global popularity, the likelihood of such unauthorized dissemination is substantial.

Dynamic Injunctions and Their Application:

In the lawsuit, the Plaintiffs invoked a recent ruling in Universal City Studios LLC Vs. Dotmovies.baby 2023:DHC:5842, where the court granted a Dynamic injunction. This innovative legal remedy provides protection not only for existing works but also for future works that may be created during the pendency of the suit. The primary aim is to prevent infringement of intellectual property rights while content is generated, bridging the gap until judicial intervention occurs.

The Court's Interim Injunction:

Recognizing the imminent threat posed by rogue websites engaged in copyright infringement, the Court issued an interim injunction to protect the Plaintiffs' rights during the ICC World Cup 2023. This injunction aimed to prevent unauthorized dissemination of cricket match content and any related information without the Plaintiffs' consent. Importantly, the Court's decision acknowledged the persistent nature of online piracy, with rogue websites likely to persistently distribute protected content to the public.

The Dynamic Injunction:

Underpinning the Court's decision was the concept of dynamic injunctions. The Court authorized the Plaintiffs to notify the Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) regarding any rogue websites illegally streaming or communicating content during the ongoing World Cup matches. In response to such notifications, Internet Service Providers (ISPs) were obligated to promptly block the infringing websites.

This dynamic injunction mechanism recognizes the evolving nature of online piracy. It empowers copyright holders to swiftly address emerging threats by identifying and blocking rogue websites that may attempt to evade enforcement through the creation of mirror websites or similar tactics. By involving government agencies and ISPs, this approach ensures that intellectual property rights are upheld even in the face of rapidly changing online environments.

The Concluding Note:

The case involving the ICC Men's Cricket World Cup 2023 highlights the significance of dynamic injunctions in safeguarding intellectual property rights, particularly in the context of online piracy. By granting interim protection and enabling swift action against rogue websites, the Court has taken a proactive stance in preserving the exclusivity of media rights.

Case Law Discussed:

Date of Judgement:27/09/2023

Case No. CS Comm 688 of 2023

Neutral Citation No: 2023:DHC:7112

Name of Hon'ble Court: High Court of Delhi

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

Case Title:Star India Pvt. Ltd. Vs Jio Live TV

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 

M Bank S.A Vs European Union Intellectual Property office

The Figurative Element of a Trademark and Its Dominance

Introduction:

 In the case of MBank S.A. Vs. European Merchant Bank UAB (EMBANK), the central issue revolved around the figurative element of a trademark and its dominance in determining the likelihood of confusion. This article provides a detailed analysis of the case and its implications for trademark law within the European Union.

Background:

The case at hand pertains to a trademark dispute between MBank S.A. (hereafter referred to as the petitioner) and European Merchant Bank UAB (hereafter referred to as the intervener). The dispute arises from the registration of the mark "EMBANK" with a figure element by the intervener on April 9, 2019. Subsequently, the petitioner filed a request for the invalidity of this mark with the European Union Intellectual Property Office (EUIPO) on October 23, 2019, based on the existence of an earlier EU figurative mark, "MBANK," registered on October 3, 2018.

The Case Proceedings:

On July 16, 2020, the Cancellation Division initially upheld the petitioner's request for a declaration of invalidity, primarily based on the existence of the earlier MBANK word mark registered in Poland. However, this decision was later set aside by the Board of Appeal, and the plea for a complete declaration of invalidity was denied, a decision subsequently affirmed by the Fifth Board. The case then progressed to the Eighth Board.

The Dominance of Figurative Elements:

The pivotal aspect of the Eighth Board's decision lay in its consideration of the dominance of the figurative element in trademarks when assessing the likelihood of confusion. The board emphasized that the overall impression given by the signs, specifically their distinctive and dominant elements, must be taken into account in this assessment, encompassing visual, phonetic, and conceptual similarities.

In this particular case, both the petitioner's earlier MBANK mark and the intervener's EMBANK mark contained both a letter element (the word "BANK") and a figure element (the figurative part of the mark). However, the Eighth Board made a noteworthy determination. It held that the figurative feature of the intervener's mark was the most distinctive aspect of the challenged mark.

This decision was significant because it effectively eliminated any chance of confusion between the two marks. The figurative element of the contested EMBANK mark was described as unrelated to the services it represented, making it the dominant feature. Consequently, the figurative element's lack of relevance to the services rendered the marks distinct from each other.

Implications for Trademark Law:

The MBank S.A. case highlights the importance of considering the dominance of figurative elements within trademarks when assessing the likelihood of confusion. Trademark law, particularly in the European Union, emphasizes a holistic evaluation of marks, encompassing visual, phonetic, and conceptual aspects. This approach ensures that trademarks are protected not only in their letter element but also it's figurative element in terms of their most distinctive and dominant features.

Furthermore, this decision underscores the principle that trademark distinctiveness can be influenced by factors such as the relevance of figurative elements to the goods or services in question. In cases where a figurative element lacks significance and is unrelated to the core business activities, it may emerge as the dominant element, ultimately preserving the distinctiveness of the mark.

The concluding Note:

The MBank S.A. Vs. European Merchant Bank UAB case serves as a valuable precedent in trademark law, shedding light on the significance of the figurative element's dominance when assessing the likelihood of confusion. By emphasizing the relevance of the dominant features and their impact on distinctiveness, this decision contributes to the evolving landscape of trademark protection within the European Union.

Case Law Discussed:

Date of Judgement:12/07/2023

Case No. T-261/22

Neutral Citation No: NA

Name of Hon'ble Court: THE GENERAL COURT (Eighth Chamber)

Name of Hon'ble Judge: Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,

Case Title:M Bank S.A Vs European Union Intellectual Property office

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 

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