Delhi High Court rules on trademark infringement

Delhi High Court rules on trademark infringement

The Court passed a decree in favour of Roland Corporation and held that actions for infringement of trademark and passing it off also have a public interest element

The Delhi High Court headed by a single judge, Justice Rajiv Sahai Endlaw, disposed of the suit of Roland Corporation vs Sandeep Jain and Ors. On 6 January 2021 by passing a decree in favour of the plaintiff and against the defendant, restraining the defendant from using the subject mark. The court observed, "Actions for infringement of trademark and passing off also have a public interest element of protecting the customers at large from possibility of confusion and of being misled into buying goods of one assuming them to be of another."

The plaintiff had instituted this suit, to restrain, Sandeep Jain, proprietor Hi Tone Electronics; Hi Tone Electronics; and, Janata Electronics, by way of permanent injunction, from passing off their goods as that of the plaintiffs by using the trademark BOSS or Hi Tone BOSS and for ancillary reliefs.

The Court dealt with the first question which was, the test to be applied to determine passing off i.e. whether the appropriate test is that of first in the market, wheresoever in the world.

The Court referred to one of the judgments passed by the Supreme Court and highlighted that to prove and establish an action of passing off, three ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation by the defendant and damage; the test, of whether a foreign claimant may succeed in a passing-off action, is whether his business has goodwill in a particular jurisdiction, which criterion is broader than the "obsolete test" of whether a claimant has a business/place of business in that jurisdiction; if there are customers for the plaintiff's products in that jurisdiction, then the plaintiff stands in the same position as a domestic trader; to give effect to the territoriality principle.

Lastly, if goodwill or reputation in the particular jurisdiction i.e., in India is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff's right in the action of passing off, the court further added.

The court also framed issues in the suit as to whether the suit has been signed, verified and instituted by a duly authorized person on behalf of the plaintiff? OPP and whether the plaintiff is the proprietor of the BOSS trademark?

To this the court remarked, on perusal of the evidence, these issues are found to have been proved. It was thus held, (a) that the suit has been signed, verified and instituted by a duly authorised person on behalf of the plaintiff; (b) that the plaintiff is the proprietor of word mark 'BOSS'; and, (c) that the defendants/counterclaimants are the proprietor of device mark 'Hi Tone BOSS'.

The court also referred to the case Milmet Oftho Industries, where a decree for an injunction in favour of the plaintiff therein, restraining the defendants from use of the mark. In appeal, the Court reversed the decree, holding first, that the first use by the plaintiff outside India, of the mark, though widely reported and advertised, did not have much reportage in India.

Secondly, that the Territoriality Doctrine (a trademark being recognized as having a separate existence in each sovereign state and hence the rights in the trademark do not extend beyond the territory of the sovereign state which has granted the rights) holds the field.

Thirdly, that prior use of the trademark in one jurisdiction would not ipso facto entitle its owner or user to claim exclusive rights to the said mark in another dominion.

Fourthly, that the plaintiff must establish that its reputation had spilt over to Indian market prior to commencement of the use of the mark by the defendant in India.

Hence, with the above observation, the court disposed of the suit by the plaintiff and passed the decree in favour of the plaintiff restraining the defendant from using the subject mark.