The most common tests validating
the existence of a trademark include that of being a prior user
and having a registered trademark. But a scenario, wherein both
exist, each in the favour of an opposing party, one of these
may weigh over the other. Striking a balance between the two is
the case of Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill
Enterprises 2008 (37) PTC 514 (Del.)
Pioneer filed a suit against
Goodwill praying for a permanent injunctive relief and delivery
up in respect of its trademark. In the present case, they seek
an ad-interim temporary injunction, which had been granted
earlier, but the order was vacated owing to non-compliance with
the relevant provisions of the Civil Procedure Code.
The trademarks under contention,
TUFF and TUFF LABEL had been adopted by Pioneer in relation to
their goods. They procured registration certificates with
respect to these marks while they also claimed to be owners and
proprietors of the artistic features of the mark. The marks are
said to have been used bona fide in the course of trade since
their adoption and also claim to maintain the highest degree of
quality control, manufacturing excellent quality products. They
also stated to have acquired tremendous reputation and goodwill
in relation to its products to which the marks are appended.
They also stated that they had an exclusive website www.tuffbolt.com and associated mail ids.
They claimed that the word "TUFF" had acquired
secondary meaning connoting a distinct indicum for its
products. They further alleged Goodwill to have adopted
identical as well as deceptively similar marks. They stated
that they learnt of Goodwill's intention when they came
across the advertisement for registration. They immediately
lodged an opposition to the same.
The counsel for Pioneer
submitted that Goodwill was indulging in unfair activities that
it was not supposed to. They stated that the same amounted to
"squatting" with a view to misuse and misappropriate
the goodwill built meticulously over time. On
Goodwill's contention of prior use and the evidence in
the form of newspaper advertisements, was said to be
insufficient to establish prior use.
Goodwill reverted to these
allegations stating that it was engaged in the business of
self-tapping screws for a long time. They stated that they
adopted the mark "TUFF" with respect to self-tapping
screws in 1991 and had advertised the same. They also claimed
that they had obtained a telegraphic address in the same
respect. They asserted that the original firm to which the
company belonged shut down in 2002, and hence the mark was in
use since 1991, in relation to one partnership firm or the
other. In this regard, they stated the balance of convenience
to be in their favour, in as much as Pioneer could not show
that they were prior users in respect of the mark. Pioneer
reverted stating that such a contention was a move to
disentitle them of an interim relief.
The Court noted that the two
words being identical and the pictorial representation also
being identical, Pioneer uses the same for nuts, bolts and
screws, while Goodwill uses the mark only with reference to a
particular type of screw. Dealing with the aspect of prior
user, in view of a registration being in favour of Pioneer, the
Court opined that in such a scenario, Pioneer would have to
depict that it was using the mark concurrently, if not prior to
Goodwill in order to obtain an injunction. Substantiating its
stance using a plethora of decisions, the Court ruled that
Pioneer could not establish a case in its favour and hence was
not entitled to an ad-interim injunction.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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