LETTER TRADE MARK

                                        

      This article deals with the Trade Marks comprised of Letter. There may be cases where the Trade Marks is essentially of Letters. Letters are the most essential feature of the Trade Marks. There may be cases where Trade Mark is comprised of Single Letter. The letter Trade Mark, comprised of single letter and descriptive to trade, are considered as poor trade mark and strong evidence of user required to establish the trade mark right. While the Trade Marks, comprised of more than one letter and not descriptive in nature to goods and trade, are considered to be relatively stronger trademarks. In case the Letter Trade Mark is comprised of unique device also, it gives strong protection to Trade Mark. Here are various Judgments and case laws where the Hon’ble Courts have recognized right in Letter Trade Marks.

1. Tube Investments of India Ltd. v. Trade Industries:(1997) 6 SCC 35:-The Competing Trade Marks were TI (within 2 concentric circles) Vs TI (within a single circle)-In this case the Court has granted injunction on the letter trade mark on the ground of Visual similarity between the two marks, coupled with the fact that the Defendant is using the same trade mark in relation to goods falling within the same class, even though different from goods for which mark is registered prima facie, poses a real danger that the product of the Defendant can be passed off as a product of the Plaintiff.

2. Aktiebolaget SKF v. Rajesh Engineering Corporation:1996 PTC(16)160:- The Competing Trade Marks were SKF Vs. SKI. In this case different explanations of the Defendant for using a mark does not strengthen its case but detracts from the truthfulness of the explanation. The use of SKI by the Defendant therefore is not bona fide and is a colorable imitation of SKF. Since adoption of the mark is dishonest, any use will be of no consequence.

3.  Weiss Associates, Inc v. HRL Associates, Inc(902 F.2d 1546):- The Competing Trade Marks were TMM  Vs. TMS. In this case the Court has held that It is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures. Even though the parties’ products were purchased by discriminating purchasers, there was nevertheless a likelihood of confusion at the initial stage of the purchasing process. It is submitted that in this case, the Court has given better protection to letter trade marks vis-à-vis the numeral trade marks and granted the protection.

4.         S. Mehal Singh v. M/s. M.L. Gupta & Anr :AIR 1998 Del 64: The Competing Trade Marks were ML  Vs. MLI. In this case the Court has observed that the question whether the two marks are likely to cause confusion or not is a question of first impression and it is for the Court to decide that question. (quoting AIR 1960 SC 142). While making comparison between the two competing letter trade marks the Hon’ble High Court of Delhi further observed that It is not right to take a portion of the word and say that because a portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The Court further put much emphasis on this fact that similarity on idea behind the competing trade marks has to be seen. The court further observed that the test of commonness of the idea between the two marks could be applied in deciding the question of similarity between them.

5.    Chemetron Corporation v. Morris Coupling and Clamp Co: 203 U.S.P.Q. 537:- The Competing Trade Marks were TT  Vs. TT. In this case the Court has observed that notwithstanding the design element of the opposite party’s mark, it is the letters “TT” that form the salient features of the mark and it is this feature that creates the commercial impression of the mark which the ordinary purchaser is likely to remember and rely upon as an indication of origin. The Court further observed that tt must be remembered that purchasers do not always have the opportunity to compare marks on a side-by-side basis and thus the tests that must be applied in determining the likelihood of confusion is not whether the marks are distinguishable when compared side-by-side but rather whether they so resemble one another as to be likely to cause confusion and this necessarily requires us to consider the fallability of memory of the average purchaser who normally retains only a general impression of trademark over a period of time.

6.    G.M. Modular Pvt. Ltd. Vs TM Marketing (India): 2007 (35) PTC 406 (Del):- The Competing Trade Marks were GM  Vs. TM:- In this case the Court has observed that At the stage of consideration of the application for interim injunction, all that has to be seen is prior use. The court further observed whether  the competing marks are not identical, test of determining deceptive similarity is the same for infringement and passing off [quoting Ramdev Food Products Limited v. Arvindbhai Rambhai Patel & Ors., 2006 (33) PTC 281 (SC). At last the Court observed Even though there are other added features in conjunction with which the competing marks GM and TM are used, a case for deceptive similarity is made out.

7.    Continental Connector Corporation Vs Continental Specialties Corporation: 492 F.Supp. 1088:- The Competing Trade Marks were CCC Vs. CSC. The Court observed that Initials are designed to be comprehended at a glance. If the number of letters is the same and there is a significant overlap in the letters used, that is generally sufficient to sustain a claim of similarity. (para 9 p.65-6).

8.    Crystal Corporation V. Manhattan Chemical Mfg. Co., Inc: 76 F.2d 506:- The Competing Trade Marks were ZBT Vs TZLB. The Court observed that It is well known that it is more difficult to remember a series of arbitrarily arranged letters combination of letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered mark makes confusion between such marks when similar, more likely. The court further observed that

it unquestionably appears that the letters constitute the dominant portion of the Appellant’s mark. It is submitted that the instant case also establishes this fact the Letter Trade Marks are strong Trade Mark as the persons at large remembers the letters more than the numerals.

9.      The General Electric Co. of India (P.) Ltd Vs Pyara Singh and Ors:  AIR 1974 P&H 14:- The Competing Trade Marks were GEC Vs AEC. The Hon’ble High Court held both the letter trademarks to be similar and defendant was injuncted from passing off.

10.      MRF Limited Vs NR Faridabad Rubbers: 1998 PTC (18) 485(Del):- The Competing Trade Marks were MRF Vs NRF. The Hon’ble High Court of Delhi observed that bearing ill mind the class of purchasers of defendant's lubes, who are not expected to keep goods manufactured by the plaintiff and defendant side by side to decide which product they intend to buy, I feel that the afore noted distinguishing features, including the pre-fix of 'Swastik" logo, pointed out by learned counsel for the defendant, do not bring about any material or significant change in distinguishing the two trade marks "MRF" and "NRF", by the class of consumers, who are likely to purchase the goods concerned, particularly when phonetically they are so close. It is no doubt true that the first letters of the trade marks of the plaintiff and the defendant are different but by the remaining two common letters, a purchaser can easily be misled for phonetic similarity. There is likelihood of even the first letter 'N' being pronounced as 'M'.

11.   Mahashian Di Hatti V/s Raj Niwas, Proprietor of MHS Masalay: 2011 (46) PTC 343 (Del):- The Competing Trade Marks were MDH Vs MHS. The Hon’ble High Court of Delhi observed that the trademark being used by the Defendant is visually similar to the trademark being used by the Plaintiff. Though phonetically, there may not be much similarity in the two trademarks on account of use of the letter "S' in place of "D' and re-arrangement of the letters. The last letter in the trademark of the Plaintiff is "H', whereas it has been made second letter in the trademark of the Defendant. The last letter in the trademark of the Plaintiff is "H', whereas it is "S' in the trademark of the Defendant. However, considering the strong visual similarity, rather weak phonetic similarity, would not be of much consequence and would not permit the Defendant to use the logo being presently used by him.

                                                AJAY AMITABH SUMAN, ADVOCATE

                                                DELHI HIGH COURT

KHUSHI RAM BEHARI LAL VS P K OVERSEAS PVT LTD

$~3.

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI

+                   CM(M) No.517/2017, CM No.17488/2017 (for stay) & CM No.17489/2017 (under Section 151 CPC).

KHUSHI RAM BEHARI LAL                                                          ..... Petitioner

Through:        Mr. Sanjeev Sindhwani, Sr. Adv. with

Mr. S.K. Bansal, Mr. Ajay Amitabh

Suman, Rahul Shamra and Mr. Kapil

Giri, Advs.

versus

P K OVERSEAS PVT LTD                                                           ..... Respondent

Through:        Mr.  Akhil  Sibal,  Sr.  Adv.with  Mr.

Akhil Sachar, Adv.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW O R D E R

%                                         20.07.2017

1.              This petition under Article 227 of the Constitution of India impugns the order dated (6^th March, 2017 of the Court of the Additional District Judge-10 (Central), Tis Hazari Courts, Delhi in TM No.48/12 (974/16) taking on record and admitting into evidence certain documents deposed by the witness DW1 of the respondent / defendant in the course of his cross-examination by the petitioner / plaintiff.

2.                 The senior counsel for the respondent / defendant appeared on caveat.

3.                 The counsels have been heard.

4.                 What has emerged is that (i) the suit from which this petition arises has been filed by the petitioner / plaintiff against the respondent / defendant for reliefs of injunction and damages etc. on the ground of the respondent / defendant passing off its goods namely rice as that of the petitioner /

plaintiff by adopting the device of „TAJ MAHAL‟; (ii) the interim order

CM(M) No.517/2017                                                                                                                                  page 1 of 3

sought by the petitioner / plaintiff was denied to the petitioner / plaintiff and against which the petitioner / plaintiff came up before this Court in appeal;

(iii)    the said appeal was disposed of by directing the trial to be completed within six months; (iv) the trial has now been completed and the suit posted

for final arguments on 22^nd July, 2017; and, (v) during the cross-examination by the petitioner / plaintiff of DW1 on 6^th March, 2017, DW1 in response to one of the questions made a voluntary statement also referring to the documents in the file which had been summoned by the respondent / defendant on that date and the learned Additional District Judge has overruled the objection of the petitioner / plaintiff to the taking on record and admissibility of the said documents and allowed the said documents to be tendered as Ex.DW1/P8 collectively.

9.                 It is the contention of the senior counsel for the petitioner / plaintiff that the learned Additional District Judge has erred in taking the said documents on record and admitting the same into evidence and in overruling the objection of the petitioner / plaintiff as to admissibility.

10.            I may notice that the learned Additional District Judge has kept the

question of the “extent of proof” open for adjudication at the stage of final arguments.

11.            I have asked as to the relevance of the aforesaid evidence and the issues framed in the suit.

12.            Neither have the issues framed been placed on record nor is either of the counsel today able to supply copy thereof.

13.            Without knowing what are the issues in the suit, the relevance of the evidence and the need to interfere with the order cannot be gauged.

CM(M) No.517/2017                                                                                                                                  page 2 of 3

14.            The senior counsel for the respondent / defendant states that the documents on which Ex.DW1/P8 has been put were infact documents in another suit between the same parties with respect to the same packaging and record of which suit had been summoned on that date. It is also contended that during the course of examination of the DW1 by the petitioner / plaintiff, some other documents from the summoned suit record were also proved as Ex.DW1/P6 and qua which no challenge is made by the petitioner / plaintiff.

15.            The senior counsel for the petitioner / plaintiff states that the documents Ex.DW1/P6 were not objected to because copies thereof were ready on the file of the subject suit.

16.            The  learned  Additional  District  Judge  having  kept  the  matter  of

“extent of proof” open and subject to adjudication, presumably at the stage of final arguments, it is deemed appropriate to dispose of this petition also with liberty to the counsels to at the stage of final arguments address further arguments if any with respect to the documents Ex.DW1/P8 being taken on record and being admitted into evidence and the learned Additional District Judge is requested to in the final judgment in the suit also deal with the said contentions uninfluenced by the proceedings dated 6^th March, 2017.

17.            No costs.

18.            It is made clear that I have not heard the counsels on the challenge in this petition and thus this order should not be construed as this Court having formed any opinion thereon.

RAJIV SAHAI ENDLAW, J

JULY 20, 2017

„pp‟..CM(M) No.517/2017                                                                                                                  page 3 of 3

PROCEDURAL LAW SHOULD BE CONSTRUED LIBERALLY

           This article deals with the liberal construction of procedural law by the Indian Courts. In law, time has been prescribed for doing a time in a prescribed period. There is Limitation Act,  which prescribes the time schedule for doing a particular act within a particular span of time. Whenever any Act is enacted by the Legislature, normally rules are also prescribes within the ambit of the Act. The Rules prescribed within the ambit of the Act, prescribes the procedure, how procedure is to be followed.

            This question came up before the Hon’ble Supreme Court of India and before the Hon’ble High Court many times. There has been many cases where the Act or Rules made there under prescribes the time for doing an act within a particular time and the party failed to do so. In such cases the Hon’ble Supreme Court of India including the Hon’ble High Court of Delhi has laid down the law that the procedural law are required to be treated liberally. Here are the details of few of such Judgments:

            In AIR 1976 SC 1177: The State of Punjab and Anr Vs Shamlal Murari and Anr, the Hon’ble Supreme Court of India, while dealing with the scope of the processual law, observed “We must always remember that processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. It has been wisely Observed  that   procedural   prescriptions   are    the    hand-maid and not the mistress, a lubricant, not a resistant in the administration of justice.

            The Hon’ble Supreme Court of India, in its Judgement , reported as AIR 2005 SC 3304: Smt. Rani Kusum Vs Smt. Kanchan Devi, reiterated the afore mentioned stand as “Processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. Procedural prescriptions are the handmaid and not the mistress, a lubricant, not a resistant in the administration of justice. It is also to be noted that though the power of the Court under the proviso appended to Rule 1 of Order VIII, C.P.C. is circumscribed by the words - “shall not be later than ninety days” but the consequences flowing from non-extension of time are not specifically provided though they may be read by necessary implication. Merely, because a provision of law is couched in a negative language implying mandatory character, the same is not without exceptions. The Courts, when called upon to interpret the nature of the provision, may, keeping in view the entire context in which the provision came to be enacted, hold the same to be directory though worded in the negative form”.

            The Hon’ble Supreme Court of India , in its Judgment AIR 1987 SC 1353: Collector, Land Acquisition, Anantnag and Anr Vs Mst. Katiji and Ors, observed that substantial justice has to be preferred upon the procedural technicalities. The Hon’ble Supreme Court of India returned the finding as under ”When substantial justice and technical considerations are pitted against each other, cause of substantial justice deserves to be preferred for the other side cannot claim to have vested right in injustice being done because of a non-deliberate delay.”

           

            Conflict between the procedural law and the substantial law has been resolved by the Hon’ble Supreme Court of India in its Judgement reported as AIR 2008 SC 2099, Zolba Vs Keshao and Ors ,as under” The use of the word 'shall' is ordinarily indicative of mandatory nature of the provision but having regard to the context in which it is used or having regard to the intention of the legislation, the same can be construed as directory. The rule in question has to advance the cause of justice and not to defeat it. The rules of procedure are made to advance the cause of justice and not to defeat it. Construction of the rule or procedure which promotes justice and prevents miscarriage has to be preferred. The rules or procedure are hand- maid of justice and not its mistress. In the present context, the strict interpretation would defeat justice.”

            In AIR 2005 SC 3353: Salem Advocate Bar Association, Tamil Nadu v. Union of India: it has been clearly held that “the provisions including the proviso to Order 8 Rule 1 of the CPC are not mandatory but directory. It has been held in that decision that the delay can be condoned and the written statement can be accepted even after the expiry of 90 days from the date of service of summons”.

            While discussing with the power of Controller of Patent, the Hon’ble Supreme Court of India, in its Judgment AIR 2012 SC 285: Polydrug Laboratroies P. Ltd. Vs Controller of Patents and Ors, the Hon’ble Supreme Court of India held “According to a plain reading of Rule 138, it is clear that the Controller may extend the time for filing evidence for a period of one month. Learned counsel for the Appellant submits that the Assistant Controller of Patents and Designs has not considered the said Rule 138 of the Patent Rules, 2003 in its proper perspective. He further submits that he has filed the evidence but the same has not been taken on record. We are of the considered view that according to Rule 138, the Controller has the power to extend the time for a period of one month.”

            The Hon’ble Supreme Court of India discussed the provisions of the Limitation Act in the Judgment AIR 1998 SC 3222: N. Balakrishnan Vs M. Krishnamurthy and returned the finding as follows ” Rules of limitation are not meant to destroy the right of parties. They are meant to see that parties do not resort to dilatory tactics, but seek their remedy promptly. The object of providing a legal remedy is to repair the damage caused by reason of legal injury. Law of limitation fixes a life-span for such legal remedy for the redress of the legal injury so suffered. Time is precious and the wasted time would never revisit. During efflux of time newer causes would sprout up necessitating newer persons to seek legal remedy by approaching the courts. So a life span must be fixed for each remedy. Unending period for launching the remedy may lead to unending uncertainty and consequential anarchy. Law of limitation is thus founded on public policy. It is enshrined in the maxim Interest reipublicae up sit finis Mum (it is for the general welfare that a period be put to litigation). Rules of limitation are not meant to destroy the right of the parties. They are meant to see that parties do not resort to dilatory tactics but seek their remedy promptly. The idea is that every legal remedy must be kept alive for a legislatively fixed period of time.”

            Similarly in its Judgments , reported as 2009 (41) PTC 474 (Del): Liberty Footwear Company Vs Force Footwear Company and Ors, the Hon’ble High Court of Delhi observed that “Rules  of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision. In Kailash Vs Nankhu AIR 2005 SC 2441 and Salem Advocate Bar Association, Tamilnadu Vs Union of India  AIR      2005 SC 3353 it has been held that there may be many cases where non-grant of extension would amount to failure of justice. The object of procedural rules is not to promote failure of justice. Procedural rules deserve to be read down to mean that where sufficient cause exists or events are beyond the control of a party, the Court would have inherent power to extend the time.”

            The Hon’ble High Court of Delhi, while discussing the power of IPAB to condone the delay in filing the Appeal, in its Judgment 2012 (51) PTC 611 (Del): CYDMAX (India) Pharma Pvt. Ltd. Vs M/s Gilead Sciences INC. & Ors, observed as under      ” Section 92 of the Trade Marks Act, 1999 states that Appellate Board shall not be bound by the procedure laid down in the CPC but shall be guided by the principles of natural justice. The learned Single Judge observed that though rules had been framed under the Patents Act in the year 2003, these rules were silent with regard to the procedure for preferring an appeal under the Patents Act presumably because of the reason that acting under Section 92 of the Trade Marks Act, the IPAB had framed Procedure Rules, 2003 which deal with procedure for preferring an appeal before the Appellate Board. Rule 14 of these rules states that if the Appellate Board is satisfied that there is sufficient cause for extending the time for doing any act prescribed under the rules (not being a time expressly provided for in the Trade Marks Act, 1999), it may, subject to such conditions as may think fit to impose, extend the time and inform the parties accordingly. This power is exercised upon making of an application to the Appellate Board in the prescribed form. The procedure for preferring an appeal under the aforesaid rules is prescribed from Rule 3 onwards. On this basis, the learned Single Judge held that the Appellate Board is empowered to extend the time for preferring an appeal.”

            After the afore mentioned discussion, it is apparent that the procedural law meant to add to substantial right of the parties. When the substantial right and the procedural law are pitted against each other, in that case, substantial justice of the parties has to be preferred. However this does not mean that a party is allowed to drag the matter on account of liberal construction of the procedural law. The procedural laws are made in order to smooth functioning of the cases and not to defeat the substantial right of the parties.  The parties, who wants the liberal treatment of the procedural law, must explain the reason for condoning in delay in doing any act, prescribed by the law. If the party is able to give sufficient reasons for condoning the delay for doing any act, prescribed by the law, in that case, the Court has inherent power to condone the delay and treat the procedural law liberally. This principle is not only applicable to the Court of Justice, but also the Quasi Judicial authorities and Tribunal also.

           

                          AJAY AMITABH SUMAN, ADVOCATE

                        DELHI HIGH COURT

USE OF TRADEMARK ON CALENDER DOES NOT PROVE USER OF TRADE MARK

         In cases for the infringement of Trade Mark and in cases of passing off, user of trademark plays very important role in establishing proprietary right over the trademark.

            Section 31 of the he Trade Marks Act 1999 provides that Trade Marks Registration is prima facie evidence of its validity. Mere production of Registration Certificate was sufficient in cases pertaining to infringement of Trade Mark. The relevant provision of Trade Marks Act 1999 is being reproduced as here in below:

            “31. REGISTRATION TO BE PRIMA FACIE EVIDENCE OF VALIDITY:

         (i). In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57),  the original registration of the trade mark and of all   subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.”

          The Hon’ble Supreme Court of India has also returned strong presumption in favour of Trade Marks Registration.  In 1986 AIR 137 titled as American Home Products Vs Mac Laboratories Private Limited, the Hon’ble Supreme Court of India has returned the finding that in cases of Infringement of Trademark, only Trade Marks Registration is sufficient to obtain the relief of injunction. The relevant para of said Judgment is reproduced as under:

         "when a  person gets his trade mark registered, he acquires  valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of  which it  is registered  ant  if  there  any invasion of  this right by any other person  using a mark which is  the same or deceptively similar to his trade mark, he can protect his  trade mark by  action for infringement in which  he can obtain injunction, damages or an account of profits mate  by  other  person.  In  such  an action  the registration of  a trade mark is prima facie evidence on its validity.”

               There by the Hon’ble Supreme Court of India observed that in cases of infringement of Trade Mark, mere Trade Mark Registration is sufficient and the registered proprietor can obtain injunction.  Much weight age was given to the registration certificate. Mere production of registration certificate was sufficient and the registered proprietor was not required to produce any other document, except producing the Trade Mark registration Certificate. Once the offending trade mark is found to be similar to the registered trade mark, then the registered proprietor was not require to produce any other document.

       Gradually the law is changing its colour and various courts passed Judgments giving much more emphasis on the user of a trademark. In 2011 (45) PTC 553 (Del) , Sancheti Appliances Pvt. Ltd. Vs M/S J.K. Electrical Industries  Judgment, the Hon’ble High Court of Delhi has retuned such finding as under:

         “However, the Trademarks Act, 1999, has woven an exception to this rule, which is that if there is a prior user, of the same or similar mark, his action or defence can defeat the registered trademark proprietor's rights.”

         The Hon’ble Supreme Court of India , in a recent Judgment 2015 (64) PTC 225 (SC), Neon Laboratories Versus Medical Technologies Ltd, has given much more emphasis on the prior user of trade mark, vis-a-vis the registered proprietor of a trade mark. In (2004) 12 SCC 624, Milmet Oftho Industries v. Allergan Inc the Hon’ble Supreme Court of India has returned the finding that the true test is that who is first in the World Market. The right of prior user was also held to be superior in case of (1996) 5 SCC 714, N.R. Dongre v. Whirlpool Corporation. In (2015) 7 Scale 136  Innovolt Inc.  Vs.  Kevin Power Solutions Ltd, the Hon’ble Supreme Court of India observed that the right of prior user prevails upon the subsequent registered proprietor of a trade mark.  

      User of Trade Mark is playing very important role. There are plethora of Judgments where various Courts has returned the finding the even registered Trade Marks dies of non user. If a party obtains registration but does not user the Trade Mark, then non user of registered Trade Mark dilutes the right Registered Proprietor. 

     In such circumstances, various parties tries to create sham user by various ways. There has been tendency by parties to create the user of Trade Mark by any means. Normally for proving the user of a Trade Mark, bills, Invoices, Advertisement in News Papers, Magazines, TV Advertisement etc are considered to be credible evidence of user. Use in calendar is also easy mode to create sham defence of user. Here is one Order of Hon’ble High Court of Delhi, where finding is that user in Calender does not prove the actual user of Trade Mark. 

   Hon’ble Justice Shri Vipin Sanghi, High Court of Delhi , vide order dated    24.07.2013, passed in Suit bearing CS(OS) 2426/2009 , titled as M/s Kiwi Foods (India) Pvt. Ltd   Vs M/s Dugar Spices and Eatables Pvt. Ltd. , returned the finding that user of Trade Mark in a Calender does not prove user of a trademark. Here are the brief introduction of facts of the said case and then the relevant laws laid down by the Hon’ble High Court of Delhi in the said order, regarding user of Trade Mark on Calender.

     In this case, plaintiff claimed that the same  is engaged in the business of manufacturing and marketing of confectionary, snacks and namkeens and other related goods. The  plaintiff asserted that it adopted the mark FUN POP since April 2005   and has also been using FUN STAR and FUN RINGS. In case the plaintiff applied for   registration of FUN POP on 08.04.2005 and for FUN STAR on 12.11.2007.   FUN RINGS is applied for on 6.10.2008. The case was pertaining to passing off action as the plaintiff’s Trade Marks Applications were not registered at that point of time. However the plaintiff has put on record documents showing user of the subject matter Trade Mark since the year 2008.

  The defendants alleged that the same is using the Trade Mark FUN RINGS since the year 2006. In   support of alleged user since the year 2006, the defendant has placed on record the calendar stated to have been  circulated  by it in the year 2006 and 2007. In these calendars apart from other products, the product FUN RINGS has also been displayed. 

     However the defendant filed the bills/Invoices only since the year 2009.  The Hon’ble High Court of Delhi returned the finding that “Mere use of the picture of FUN RINGS on the calendar of the year 2006 does not establish the actual user of the   said mark on the product by the defendant. Therefore, the plaintiff is   entitled to protection in respect of FUN RINGS. “

  Accordingly in the afore mentioned case, the Hon’ble High Court of Delhi was pleased to grant injunction in favour of the Plaintiff and against the Defendant.  The said order has not been challenged by the Defendant in this case, hence the said order has become a biding precedent.

       It is submitted that the Hon’ble High Court of Delhi disapproved the user of Trade Mark by the Defendant in the Calender as the same is self serving document. If user of the Trade Mark in Calender be approved by the Court , then any party can create the sham user. Reason is that Calender is a self serving document and can be created/printed by the party. This is the reason, why the Hon’ble High Court of Delhi returned the finding that user of Trade Mark on Calender does not establish the actual user of the Trade Mark.

     Similarly Brochure, Price List, Pamplets , Catalogue etc also fall in same category of document, Calender falls. All these documents are self serving documents and party can create itself and can put any year on these documents. All these documents do not relate to actual commercial user of the trademark. Unlike the bills/Advertisement in New Paper, Documents pertaining to Government Organization etc do relate to actual user of trade mark. 

      It is submitted that in this document this factor must have been in the mind of Hon’ble Court that those documents, which actually relates to commercial user of a trade mark, should be considered as user of a trademark. While the documents, which actually do not correspond to actual commercial user of trade mark, should not be considered as user of trademark. 

                                             AJAY AMITABH SUMAN, ADVOCATE ,DELHI HIGH COURT  

HIGH COURT OF DELHI ALLOWS THE COMMUNICATION OF COURT ORDER THROUGH MOBILE

            

               

            Gone are the days, when service on the party used to be effected by way of publication in News Paper or by way of affixation in the concerned locality, where the party resides. With change in technology and with advent of internet era, e-mail, mobile, facebook, whatsapp etc, the mode of communication is changing fast.  Now messages can be communicated to the party in a much fast manner, than it used to be in the Old days. 

            There has been long time, since it has been felt that procedure laid down by Civil Procedure Code 1908 in India, regarding service on the parties and communication of the court orders has to be amended. As the manner of communication has changed with advancement of Information Technology and the advent of Internet Era, the change in the law was badly required, so that it can keep pace with the time and technology.

            When Civil Procedure Code 1908 in India was enacted in India, at that time, neither there was e-mail, nor the mobile or whatsapp or facebook. There Indian Court has been passing various orders in order to keep pace with the advancement in the technology.  Hon'ble Mr. Justice Rajiv Sahai Endlaw, Delhi High Court, vide its order dated 27.04.2017 passed in CS(COMM) 1601/2016, titled as Tata Sons Limited & ors Vs John Doe (s) & ors passed order to this effect. Thus Hon’ble High Court of Delhi is trying to keep pace with the advancement in Technology and passed the order that in a Suit proceeding, service on a party can be effected through WHATSAPP also.

            In matters pertaining to wed sites, it is very difficult to effect services as most of the time, the addresses of domain name are hidden. Normally the web sites keep their names , address hidden. The exact names, details and addresses of the web sites are available with the registrar of the web sites. The Hon’ble High Court of Delhi passed the order to the effect that on such domain names, orders can be communicated to the mobile numbers of registrant of such domain names. The fact of the case was that THE POLO/LAUREN COMPANY L P filed suit for permanent injunction seeking proprietary right in the trademark ‘POLO’; POLO WITH DEVICE OF POLO PLAYER and other POLO formative trademarks. Plaintiff has built up reputation all over the world including India, in respect of wide range of its products, which includes, apparels, perfumes, leather products, etc. It is claimed by the plaintiff  that the defendant nos.1 & 2, in order to encash the goodwill and reputation of the plaintiff’s products, are selling online through website www.varshaa.com the counterfeit T-shirts, shirts, trousers, sweaters, shorts, scarfs, etc. with word/mark/label ‘POLO’ with or without the device of POLO player. Accordingly vide order dated 28.09.2015 passed in I.A. No. 20417/2015 (u/O 39 Rule 1 & 2) in Suit bearing CS(OS) 2946/2015 titled as THE POLO/LAUREN COMPANY L P Vs M/S VARSHA & CO AND OTHERS, the Hon’ble High Court of Delhi was pleased to grant ex-parte injunction in favour of the plaintiff and against the defendant no.1 and 2 restraining them from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark/label POLO with or without the device of POLO player or any other word/mark/trademark/label, which may be identical with and/or deceptively similar to the plaintiff’s trade mark/label/domain names in relation to their impugned goods or readymade garments and accessories and allied and cognate products, through the website www.varshaa.com or otherwise.

            In these circumstances, the plaintiff moved I.A. No. 1268/2016, under Order XXXIX Rule 2A CPC complaining of non-compliance of the ex-parte order of injunction passed by this Court on 28.09.2015. By virtue of order dated 27.01.2016 passed in the said Suit bearing CS(OS) No.2946 of 2015, the Hon’ble Justice Shri Vipin Sanghi, High Court of Delhi passed the following order:

“Admittedly, the plaintiff has not been able to serve the defendants at the given address in the memo of parties. Mr. Bansal submits that in the whois directory, the address of the defendants has been hidden. A perusal of the whois directory qua the defendants’ domain name varshaa.com shows that the e-mail of the registrant is varshaa.com@domainsbyproxy.com. Moreover, it also contains the Registrar Abuse Contact E-mail, which is abuse@godaddy.com and the Registrar Abuse Contact Phone +1.4806242505. The defendant could be served at the aforesaid e-mail address and the Registrar could also be informed of the injunction orders passed by this Court through e-mail as well as telephonically. Since the defendants have not been communicated the said order till date, it may not be correct to say that there is a deliberate infringement of the said order, and thus, the application under Order XXXIX Rule 2A CPC would not lie at this stage. The plaintiff is permitted to serve the defendants at the aforesaid e-mail address and also to communicate the orders passed by this Court on 28.09.2015 to the Registrar godaddy.com telephonically as well as through e-mail. If so communicated, the Registrar godaddy.com shall ensure compliance of the order dated 28.09.2015 in respect of the defendants.”

From bare perusal of the said order dated 27.01.2016 passed in the said Suit bearing CS(OS) No.2946 of 2015, it is clear that Hon’ble Justice, Shri Vipin Sanghi passed the order to the effect that the defendant namely www.varshaa.com could not only be served through the E-mail address but also passed the direction that on the said web site, the injunction order passed in the present Suit can be communicated through the e-mail address and mobile number appearing on the registrant of the said domain name. 

                                 AJAY AMITABH SUMAN, ADVOCATE

                                 DELHI HIGH COURT