Delhi High Court Directs Company to Comply with Trademark Infringement Order, Display Only New Name

Delhi High Court Directs Company to Comply with Trademark Infringement Order, Display Only New Name

Introduction

The Delhi High Court has directed a company to display only its new name in all its goods, services, promotional material, physical or online media, and in all respects thereof, after finding that the company's previous name infringed upon a trademark of a registered proprietor.

Factual Background

The plaintiff, Infosys Limited, had filed a suit against the defendant, Southern Infosys Limited, alleging trademark infringement and passing off. The Court had previously passed a judgment dated May 27, 2024, directing the defendant to change its corporate name.

Procedural Background

The defendant had filed a compliance affidavit, but the plaintiff was aggrieved by the statement recorded in the affidavit. The plaintiff argued that the defendant could not rely on Section 12 of the Companies Act, 2013, to continue to reflect its previous name, which had been injuncted.

Contentions of the Parties

• Plaintiff's Contentions: The plaintiff relied on a previous order of a Coordinate Bench in Sanofi & Anr. v. Zanofi Pharmaceutical Pvt. Ltd., which held that in cases where a Court directs a company to change its name due to trademark infringement, the company cannot display its previous name.
• Defendant's Contentions: The defendant had no objection to removing its previous name from display and would comply with the directions of the Court.

Court's Analysis

The bench of Justice Manmeet Pritam Singh Arora observed that the power exercised by the Court to direct a company to change its name operates in a different field than that of a voluntary change of name. The Court held that the defendant could not display its previous name, which had been specifically injuncted.

Reasoning & Analysis

The Court relied on the provisions of Section 16 of the Companies Act, 2013, which empowers the Central Government to direct a company to change its name if it is identical with or too nearly resembles a registered trademark. The Court also referred to previous judgments, including Sanofi & Anr. v. Zanofi Pharmaceutical Pvt. Ltd. and M/s Montari Overseas Ltd. v. Montari Industries Ltd.

Implications

The decision highlights the importance of complying with Court directions and the consequences of trademark infringement. The Court's ruling provides clarity on the requirements for companies to change their names in cases of trademark infringement.

Outcome

The Court directed the defendant to display only its new name and not its previous name. The defendant was also directed to file a fresh compliance affidavit within two weeks recording its undertaking to comply with the direction.

In this case, the plaintiff was represented by Mr. Peeyosh Kalra, Mr. CA Brijesh, Mr. Ishith Arora, and Ms. Pragati Agrawal, Advocates. Meanwhile, the defendant was represented by Mr. Piyush Kaushik, Advocate.