In a recent ruling titled Mr. Sanjay Arora v. Jasmer I.A. 14318/2022 in CS(COMM) 614 of 2022, the Delhi High Court, while deciding an application under Rule XXXIX 1 and 2 of the Code of Civil Procedure 1908, restrained the Defendant Jasmer from using the mark ‘TIGER’ or ‘TIGER KISSAN PIPE’ or any other mark identical or deceptively similar to that of the plaintiff’s registered trademark TIGER either as a wordmark or part a logo/device, part of trade dress, domain name, promotional campaign or brochure.
Background
The Plaintiff, Sanjay Arora, sole proprietor of M/s Arora Poly Plast, sought registration for the trademark “
” under no. 3746492 on February 6th, 2018, in Class 17, claiming use since June 17th, 2003. Thereafter, the plaintiff sought registration for the same trademark under no. 3746494 in Class 19, claiming use since June 17th, 2003. The plaintiff has also been granted copyright registration for the artistic work vide copyright registration no. A-129594/2019, and the first year of publication was 2003 in India. The defendant was an employee of the plaintiff, but owing to misconduct and theft committed at the office of the plaintiff, the plaintiff sacked him from his job in February 2017.
Subsequently, the plaintiff filed a police complaint against the defendant, stating that he had committed fraud upon the plaintiff by doing business with TIGER KISSAN PIPES under the name ‘TIGER BRAND’. An FIR was registered against the defendant under sections 408 and 34 of the Indian Penal Code (IPC). The plaintiff stressed that the said complaint was proof enough that as of 2017, the plaintiff was already using TIGER BRAND, while it was applied only on May 25th, 2017. The plaintiff also issued a cease-and-desist notice to the defendant, to which the defendant replied that his mark was different from that of the plaintiff. Thereafter, the defendant filed rectification petitions against the plaintiff’s registered trademarks, alleging that the word ‘TIGER’ was common to trade. The defendant applied for the registration of the trademark “
” vide application no. 3556724, dated May 25th, 2017, in class 19 on a ‘proposed to be used’ basis, which was abandoned and was not used. Thereafter, the defendant applied for the registration of the mark “
”vide application no. 4314765 on a ‘proposed to be used’ basis, which is still in use.
The defendant argued that he applied for its mark only on a proposed-to-be-used basis and that the plaintiff had not used the TIGER BRAND since 2003, as wrongly claimed by the plaintiff, and had adopted its trademark in February 2018 only after the trademark application was filed by the defendant. The defendant stated that the plaintiff could not claim exclusivity over the word TIGER, and in any event, he was using a completely different trade dress for its packaging, along with the device mark. The defendant further admitted that the plaintiff had been using other marks like ‘KING’, ‘KARTIK’, ‘SHERA’, and ‘EXPLODE’ while working with the plaintiff. The defendant relied upon the invoices of the plaintiff till year 2019, claiming that they did not show the TIGER watermark and only post-2019 invoices showed the watermark. The defendant vehemently contended that the plaintiff had tried to fabricate its invoices and interpolated the watermark in order to show that they were actually in use.
The plaintiff, in rejoinder, countered the submissions made by the defendant, by saying that the reliance on the other trademarks containing the word TIGER in classes 17 or 19 is irrelevant since only five of the registered users in class 19 for the word ‘TIGER’ pertain to pipes and are marginal users, and further, have been registered subsequent to registration of the plaintiff’s mark. The plaintiff stated that only one mark in Class 19, i.e., ‘TIGER GAON’ by the Applicant KUBER Tobacco Products Pvt Ltd. In contrast, five marks in Class 17 were registered prior to the registration of the plaintiff’s trademark.
The plaintiff placed reliance upon the decision of Pankaj Goel v. Dabur India Ltd and stated that mere citing of a trademark in the Register of Trade Marks by the defendant was not enough and that the defendant has not been able to prima facie prove that other users of the same brand ‘TIGER‘ had a significant business turnover and posed a threat to the distinctiveness of the plaintiff’s mark, and that the plaintiff is not expected to sue every infringer, who does not cause an impact on its business. The plaintiff extensively placed reliance upon the CCTV footage, which was of the year 2014, which evidences that while the process of packaging its products was ongoing in his warehouse, pertaining to the brand ‘TIGER’, the defendant was also present in the picture.
Issue:
The main issue before the Court was as to who will be considered as the prior user of the trademark TIGER, and who adopted it subsequently.
Analysis:
The Court, after perusal of the records, stated that while the plaintiff claimed use since 2003 with respect to its said trademark, the defendant filed its applications for both of its marks only on a proposed-to-be-used basis. The Court further observed that in support of the same, the plaintiff has placed invoices from the year 2005 onwards with the product mentioned as ‘AGRICUTURE KISSAN PIPE’, which had the watermark TIGER BRAND’. The contentions of the defendant regarding the invoices between the years 2005-2018 produced being scattered, as they did not have the watermark, were rejected by the Court, observing that these invoices were 69 in number, and by selectively picking out invoices which do not have a watermark, the defendant cannot possibly displace the claim of use. The Court perused the video footage produced by the plaintiff to substantiate that at the time of packaging of its products under its trademark, the defendant was an employee of the Plaintiff till February 2017.
The Court, while relying upon the decisions of Ishi Khosla v. Anil Aggarwal, Copenhagen Hospitality and Retails and Others v. A.R. Impex and Other, ACL Education Centre Pvt. Ltd. and Another v Americans’ Centre for Languages and Another and Neuberg Hitech Laboratories Pvt. Ltd. v. Dr. Ganesan’s Hitech Diagnostic Centre Pvt Ltd., held that the blatant dishonest adoption by the defendant of its mark cannot be countenanced. The Court also rejected the argument of the defendant as to the mark ‘TIGER’ being common to trade and which is used by enormous users by stating that such contention will not come to the rescue of the defendant owing to the dishonest adoption of its mark. The Court further stated that the defendant has failed to produce any documents to establish itself as the prior user to the plaintiff.
Conclusion:
Based on the above analysis, the Court restrained the defendant from using its mark ‘TIGER’ or ‘TIGER KISSAN PIPE/ “” or any other mark identical or deceptively similar to that of the plaintiff’s registered mark ‘TIGER’. Additionally, the Court stated that the defendant must ensure that all existing packaging and promotional material shall be discontinued/withdrawn from distributors/vendors/sales force within a period of 3 weeks.
Authors: Manisha Singh and Siddharth Pandey
First Published by: Lexology here