Delhi HC: The Rights of a Registered Trademark Holder Are Not Absolute
The Delhi High Court dismissed an application filed by the plaintiff under Order XXXIX Rules 1 and 2 Civil Procedure Code, 1908 (CPC) to set aside an ex-parte order dated July 03, 2020 by the defendant under Order 39 Rule 4 read with Section 151 CPC, 1908.
The plaintiff – Delhivery Private Ltd. contended that it has been using the trademark for its logistics, transportation, management etc., since 2008.
The defendant company – Treasure Vase Ventures Ltd. had been associated with the plaintiff and in fact was already a vendor of the plaintiff company albeit under its original mark 'SMART-E Delivery Services.'
According to the plaintiff, the defendant was using a different mark and shifted over to a mark deceptively similar to that of the plaintiff. The plaintiff stated that the defendant had in a bona fide manner missed to add this information to their cause of action clause and to make it stronger and to show the dishonesty of the defendant, the plaintiff company filed an application under Order VI Rule 17 CPC, 1908 wherein the plaintiff has sought to bring all such facts on record before the court.
The plaintiff argued that the defendant changed its mark in May, 2020 after having adopted the same in February, 2020 only to come as close as possible to the business of the plaintiff and to earn profits in an illegal manner. It was his argument that such shifting of mark shows the mala fide intentions of the defendant. The plaintiff also does not claim any right over the word 'delivery' used in a generic sense and that the trademark 'DELHIVERY' is different from the generic word 'delivery.'According to the plaintiff, the defendant was providing identical services, to identical clients of the plaintiff and that there was scope for confusion and deception as even the corporate clients may associate the use of the impugned mark by the defendant as an incidental or subsidiary mark of the plaintiff.
The Learned counsel appearing on behalf of the defendant company argued that there was deliberate non-disclosure of material facts and material defaults. It was submitted that the plaintiff acquiesced to the use of the mark by the defendant and hence should not be entitled to an injunction. According to the defendant as per Section 2(h) of the Trade Mark Act, 1999(TM) wherein 'deceptive similarity' has been defined to contend two parameters need to be fulfilled before the marks are held to be 'deceptively similar.' Firstly, there must be such close resemblance between them. Secondly, that it is likely to lead to confusion. Even the registration of a descriptive word does not bar others in the same trade from using it because the rights granted pursuant to the registration are as per Section 28 of the TM Act, 1999.
The court observed, "the rights of a registered trademark holder are not absolute, inasmuch as both Sections 28 and 29 are subject to exceptions carved out to infringement of trademark." Further it was ascertained by the court that it is a well settled law that a mark can either be phonetically or visually similar and has to be seen disjunctively and not conjunctively. The position of law is well settled that a generic word cannot be registered, that is, a generic word cannot be appropriated by one party to the exclusion of others.
The Court added that it cannot ignore the generic nature of marks and confer monopoly on the same in favour of any party. In the present case the mark 'DELHIVERY' is a phonetically generic word and cannot be registered so as to seek benefit of statutory rights. The proof of actual damage is not required which was misplaced in the facts and the appellant's submission as to mala fide adoption of the mark by defendant had failed to establish.
The court finally concluded that the prayer made by defendant in the application as per Order XXXIX Rule 4 CPC, 1908 needs to be allowed and the interim injunction be granted. Further the court directed underOrder XXXIX Rules 1 & 2 of CPC, 1908 application is dismissed as aforesaid is a prima-facie view and is not an expression on the merits of the suit.