No Trade, No Trademark; Delhi High Court Rejects Westend Greens’ Case Against Neighbouring Farmhouses
No Trade, No Trademark; Delhi High Court Rejects Westend Greens’ Case Against Neighbouring Farmhouses
Introduction
The Delhi High Court has dismissed trademark infringement and passing-off suits filed by Westend Green Farms Society against neighbouring farmhouse owners, holding that mere display of the name “WESTEND GREENS” on residential signboards does not constitute trademark use “in the course of trade.” The Court found that the pleadings failed to disclose any actionable cause for infringement or passing off under the Trade Marks Act, 1999.
Factual Background
Westend Green Farms Society manages a gated farmhouse colony in South Delhi and claimed proprietary rights over the mark “WESTEND GREENS,” which it asserted to have used since 1993. The society also relied on trademark registrations for services related to the welfare and protection of its members.
The dispute arose when neighbouring farmhouse owners located at Amaltas Avenue displayed the words “WESTEND GREENS” on signboards outside their residential properties. The society objected to this usage, alleging that it amounted to trademark infringement and passing off.
Procedural Background
The society instituted commercial suits seeking injunctions against the farmhouse owners. The Commercial Court rejected the suits at the threshold, holding that no cause of action was disclosed. Aggrieved, the society preferred appeals before the Delhi High Court. The appeals were heard by a Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla.
Issues
1. Whether the display of “WESTEND GREENS” on residential signboards amounted to use of a trademark in the course of trade under Section 29 of the Trade Marks Act, 1999.
2. Whether the pleadings disclosed sufficient material to sustain a claim of passing off.
3. Whether the Commercial Court was justified in rejecting the suits at the threshold.
Contentions of the Parties
The appellant society argued that the farmhouse owners were using the name and logo “WESTEND GREENS” to enhance the value of their properties and mislead prospective buyers or lessees into believing that the properties formed part of the society. It contended that such use was commercial in nature and likely to cause confusion.
The respondents countered that the signboards were purely descriptive of the location and did not amount to use of the mark for trade, commerce, or offering of goods or services. They argued that no actionable misrepresentation or commercial exploitation had been pleaded.
Reasoning and Analysis
The High Court emphasised that trademark infringement under Section 29 requires use of the mark “in the course of trade.” Mere display of a name on a residential signboard, without any linkage to commercial activity, does not satisfy this statutory requirement.
The Court noted that the pleadings contained only bare assertions and failed to explain how the alleged use of “WESTEND GREENS” was connected to any trade, business, or service offered by the farmhouse owners.
Observing the absence of foundational facts, the Benchstated that, “It is not mere trade, by the defendant, which attracts Section 29. It is use of the infringing trade mark in the course of trade. Absent any further averments, the mind boggles as to how a commercial activity, assuming it were to be carried out in the respondent's premises, would profit by the use of ‘WESTEND GREENS’ on the name plate or signboard outside the premises.”
On the claim of passing off, the Court held that the society had failed to identify any goods or services allegedly offered by the respondents or demonstrate how the public was misled into believing an association with the society.
It reiterated that an allegation of misrepresentation, without particulars establishing goodwill, misrepresentation, and damage, cannot sustain a passing-off action.
Decision
The Delhi High Court dismissed the appeals and upheld the Commercial Court’s orders rejecting the suits at the threshold. It held that no cause of action for trademark infringement or passing off was disclosed, as the alleged use of the mark was not in the course of trade.
In this case the appellant was represented by Mr. Abhinav Mukerji, Sr. Adv. with Mr. Sumit Gehlot, Mr. T.S. Thakran, Mr. Abhishek Singh and Ms. Manju Gehlot, Advocates. Meanwhile the respondent was represented by Mr. Rakesh Lakra, Ms. Shivani Kher, Mr. Akash Kumar and Mr. Bhavya Sharma, Advocates.
