Trademark laws allow the grant of
monopoly over a mark to its proprietor. This, however is subject to
certain conditions, such as, initiating a timely action against
infringers, if the proprietor sleeps over its rights, the case may
be hit by the doctrine of laches; similarly if the proprietor of a
mark allows such infringement (being aware of the infringer) then
it will amount to acquiescence.
The facts of Essel Propack Ltd.
v Essel Kitchenware Ltd. are rather interesting; it started as
a usual case of a Plaintiff claiming infringement of its trademark
rights by the Defendant, even though the Defendant was using the
mark in relation to different goods and services. As the Court
dwelled deeper into the facts, it came to the Court's knowledge
that 7 years before initiating the suit, i.e. in 2003, the
Plaintiff had sent a cease and desist notice to the Defendant.
Simultaneously, the Plaintiff had also filed an opposition to the
Defendant's trademark application. In 2004, the Defendant had
filed a civil suit at the Calcutta High Court seeking injunction
against the Plaintiff for issuing groundless threats. Complicating
the issue further, the Defendant also filed an opposition against
the Plaintiff's trademark application and the same was appealed
by the Plaintiff before the IPAB. All these material facts had not
been mentioned in the Plaint. Subsequently, in 2010 the Plaintiff
withdrew its opposition against the Defendant's mark, following
which the Defendant's mark was registered.
It was the case of the Defendant
that the Plaintiff, despite being aware of its presence in 2003 did
not initiate a legal suit and instead filed a suit when the
Defendant had established a flourishing business. The Court
contemplated upon the facts before it and ruled that in case of a
dishonest adopter of a mark, the relief of injunction had to be
granted irrespective of the success of the business however, the
outcome would be different if a case of acquiescence is made. In
the words of the Court 'if the owner of a registered trade
mark stands by and allows a man to spend considerable amounts on
sales and promotional activities in order to acquire a reputation,
he cannot then assert his rights in order to stop the business of
another. Where acquiescence in the infringement amounts to consent,
it is a complete defence.' The fact that Plaintiff had
waited for so long to file a suit against the Defendant shows as if
the Plaintiff was waiting to file the suit at an opportune time
i.e. when it might be beneficial for them to file the suit rather
than when it was actually the correct time to do so. The Court also
held that since both the parties had trademark registrations in
different classes and for different goods & services, there was
no possibility of confusion.
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The territorial jurisdiction to institute a trade mark infringement or copyright infringement case is turning into a battleground with contrary views being taken by the Delhi High Court and the Bombay High Court.
At least the Delhi High Court thinks so. In a recent judgment passed by the Delhi High Court in the case of The Chancellor, Masters & Scholars of the University of Oxford & Others Vs. Rameshwari Photocopy Services & Another, . . .
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