The High Court of Delhi (Court), in its latest decision Peps Industries Pvt Ltd v Kurlon Limited (C.S. COMM 174/2019 with IA 4871/2019 & IA 6715/2019), has added to the myriad decisions relating to descriptive marks and the importance of use, to sustain an action for infringement. The court has also in this context considered the defence of prior use under section 34 of the Trade Marks Act, 1999 (Act). The Court rejected the Defendant's prior use defense as it observed that the Defendant's use of the mark 'NO TURN', though prior in time to the Plaintiff's use, was intermittent and not voluminous. At the same time, it also refused to grant the Plaintiff any injunctive relief as the Court held that use of the mark 'NO TURN' by the Plaintiff was (i) descriptive of the goods sold thereunder; and (ii) the extent of use was not sufficient to demonstrate the extent of goodwill required to prove acquired distinctiveness.
The Plaintiff claimed to have used the mark 'NO TURN' in respect of mattresses since 15 January 2008. An application for registration for the same was made just prior to commencing use on 2 January 2008 and a registration had been granted on 4 February 2011, for the same. In or about August 2018 the Plaintiff learnt of the Defendant's adoption of the mark NO TURN. Consequently, cease and desist notices were issued to the Defendant. Post the issuance of the cease and desist notice, the Defendant claimed prior use of the said mark since October 2007, filed a trademark application for the same and also sought rectification of the registration obtained by the Plaintiff. The Plaintiff proceeded to file a suit before the Court which granted an ex-parte ad interim injunction. Upon receipt of summons, the Defendant filed an application requesting the Court to vacate the order of injunction claiming that it was a prior user of the mark.
Upon an examination of the material produced by the parties, the Court arrived at the following findings. That the mark NO TURN was descriptive in nature and signified that the mattresses did not require to be turned. The Defendant had not used the mark as a trademark but to describe its products. In any event, the use of the mark NO TURN by the Defendant, though prior to that of the Plaintiff, was not continuous and extensive in nature but was only intermittent as evinced by the limited invoices produced. Since it was held that the mark NO TURN was descriptive in nature, the Court further examined whether the Plaintiff had produced evidence to demonstrate that the mark had acquired distinctiveness. The Court concluded that it was not satisfied that the mark had acquired distinctiveness on the date of the application nor at the time the Plaintiff's mark proceeded to registration. In light of the same, the Court refused to confirm the interim injunction.
After examining the relevant provisions of the statute, various judicial precedents relating to the rights of registered proprietors, limitations thereon and judgements relating to protection available to descriptive marks, the Court arrived at a position as summarised below:
- A registered proprietor may be sued for passing off by a prior user of the mark.
- Once a trademark is used, a trademark registration is a mere recognition of pre-existing common law rights.
- Where there are two registered proprietors, an evaluation of better rights in common law is essential to decide whose rights are better and superior.
- A registered proprietor cannot claim higher rights than a person who has been continuously using the mark prior to the use of the mark by the proprietor. Mere issuance of an advertisement or intermittent non-continuous use may not be sufficient to claim such prior use / rights.
- Where prior use is set up as a defence to an action for infringement, it is not only essential for the Defendant to demonstrate that the use was commenced prior to the Plaintiff, but also that it was a continuous uninterrupted use of the mark.
- Equally, where the mark in question is a descriptive mark; extensive, continuous, uninterrupted use for many years resulting in the consumers identifying the mark only with the proprietor claiming rights, must be demonstrated. It emerges from a reading of the order that the burden upon the plaintiff claiming rights in a descriptive mark would be to demonstrate that the mark has acquired the status of a well-known mark.
The decision once again emphasises the importance of extent of use of a mark especially in the context of descriptive marks, which are regarded as weak marks. A very high burden is placed upon Plaintiffs where an action is initiated basis a descriptive mark. This Judgment holds that Plaintiffs are not only required to demonstrate extensive continuous use resulting in acquired distinctiveness but also that such use resulted in the mark attaining the status of a well-known mark. A reading of the judgment seems to suggest that such status of a well-known mark should have been demonstrated at least as on the date of the registration of the mark by the Plaintiff and not on the date of the adoption of the mark by the Defendant. From the perspective of a defendant, claiming the defence of prior use under section 34 of the Act, the position that has emerged is that mere prior use is not sufficient, but continuous use thereafter must be demonstrated, else the defence is likely to fail.
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