India: "An Infringer Cannot Sue Another Infringer"

Last Updated: 27 May 2011
Article by Sonam Lhamu Bhutia and Vasundhara Kamath S

Generally, when a person approaches the Court with a prayer, he is expected to do so with clean hands. The same applies in case of infringement matters too. If an individual has been refrained from using a mark, he/she cannot bring an action against another for infringement of that mark. This is what the Division Bench of the Delhi High Court laid down in Ansul Industries v. Vineet Kumar, wherein the Appellant had challenged the order of the Single Judge restraining it from getting interim relief against the Respondents for the use of the mark 'Udta Panchhi'.

BRIEF FACTS OF THE CASE:

Ansul Industries, the Appellant herein had been restrained, directly and indirectly from dealing with chewing tobacco under the Trade Mark 'Udta Panchhi' and/or any other mark that would be identical and/or deceptively similar to the Trade Mark of M/s. Shiva Tobacco Co., Ambala, i.e., 'Panchhi'. A compromise decree had however been passed and the company had accepted and recognized the Trade Mark 'Udta' of the Application therein. Before the said compromise was passed Ansul Industries filed a suit against Vineet Kumar and also moved an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC) restraining them from using the Trade Mark 'Udta Panchhi' in relation to tobacco products. Interim injunction was granted, which was confirmed by the Single Judge of the High Court. Thereafter, the aforesaid compromise decree was passed in the suit filed by Shiva Tobacco Company.

Vineet Kumar subsequently moved an application under Order XXXIX Rule 4 CPC for vacation of the injunction order. The single judge had allowed the application. The Court considered whether Ansul Industries ought to have been restrained from using the mark during pendency of the suit. Ansul, had already conceded that it could not use the mark 'Udta Panchhi'. Hence, the question before the Court was whether Ansul Industries could prevent Vineet Kumar from using the word mark 'Udta Panchhi' when it itself had no right in the said mark.

The Court noted that the clause in the agreement stopped short of permitting Ansul Industries from using the mark 'Udta' in combination of the word 'Panchhi'. Since there was no right vested in Ansul of use, permissive or otherwise, merely confirming the right to institute an action could not be recognized by the Court as it would encourage champerty. If allowed, the Court considered, it would result in a queer situation wherein M/s. Shiva Tobacco would be disabled from instituting an action against either the Respondent or any other person using the mark 'Udta Panchhi'.

Ansul Industries referred to the compromise application which was signed between them and M/s. Shiva Tobacco, as per which certain rights of Ansul Industries had not been recognized, including the right to use the Trade Mark 'Udta Panchhi' in relation to tobacco products.

The attention of the Court was also turned towards the order of the single judge confirming the interim injunction as prayed by Ansul Industries. Prima facie view was taken to the effect that Ansul had adopted the Trade Mark and label in 1980 and had substantial turnover and had spent substantial amount in advertisement over the years. In the circumstances, the Court considered that Ansul Industries was not manufacturing and marketing counterfeit products and that they t had a right to use the Trade Mark 'Udta' in relation to tobacco and thus they had the right to restrain any person from using the same for their product. The Court said that in this present case, however, that this was not the issue raised by Ansul.

Hence, the Division Bench of the Delhi High Court held that the order passed by the single judge did not suffer from any infirmity, and so saying the appeal was dismissed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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