Authored By – Disha Dewan
This article was first published in the INTA Bulletin,Vol. 69, No. 7
Recently, the High Court of Delhi settled the issue of whether merely lodging an application for the registration of a trademark by the defendant gives the plaintiff jurisdiction to file and succeed in an action for trademark infringement. Analco (India) Pvt. Ltd. v. Navodya Exim Pvt. Ltd., CS (OS) No. 1764/2009 (Del. Jan. 23, 2014).
The plaintiff is the registered proprietor of the trademark ALOMAX, for plywood, wood doors, window frames, etc., in Class 19, with a pending application for registration in Class 6 at the time the suit was filed. The plaintiff has been using the mark ALOMAX since 2000. The defendant applied for registration of the trademark ALOCOMAX, also in Classes 6 and 19. Based on this fact, the plaintiff filed suit for a permanent injunction for infringement of trademark, passing off, rendition of accounts and delivery up.
The defendant contended that it had not yet used the trademark ALOCOMAX and therefore the question of infringement did not arise. It had not even started manufacturing or marketing any goods under the mark.
The Court disagreed with the defendant. It held that the act of filing an application for registration of a trademark established an intention on the part of the defendant to use the same in trade in due course. The suit for passing off and infringement was therefore maintainable and in anticipation.
The Court found in favor of the plaintiff and passed a decree restraining the defendant from “manufacturing, selling, offering for sale, advertising directly and indirectly dealing in any goods falling in Class-6 & 19 bearing the trade mark ALOCOMAX or any other trade mark, which is either identical or deceptively similar as that of the plaintiff.” However, it declined to award any damages or any order for rendition of accounts. The decision may be appealed to the Divisional Bench of the High Court.
Trademark owners do not have to wait until there is actual infringement in the form of manufacturing, marketing and advertising of goods or services to initiate infringement proceedings in India. A quia timet action, such as was brought in this case, will give them instant relief by nipping their problem right in the bud.