The Delhi High Court has held that defence of prior use cannot be accepted when the use of the mark is intermittent and not voluminous.
The Plaintiff had applied for the registration of the mark ‘NO TURN’ in January 2008 and it was granted in February 2011 with effect from January 2008 under Class-20 for mattresses, wall beds, adjustable beds, coir mats, spring mattresses, sofas, pillows, cushions, seats, and other related products.
In August 2018, the Plaintiff came to know that the Defendant had dishonestly adopted the trademark ‘NO TURN’.
Upon receiving a legal notice, the Defendant also applied the mark ‘NO TURN’ as also the rectification application seeking cancellation of the Plaintiff’s mark ‘NO TURN’ on the ground of prior user under Section 34 of the Trade Marks Act, 1999.
The Plaintiff subsequently moved the High Court and an ex-parte interim order of injunction was passed against the Defendant.
- It has also held that there could be no injunction in the case when a registered trademark is merely a descriptive mark having no distinctiveness.
- The order was passed by a Single Judge Bench of Justice Mukta Gupta in a suit for permanent injunction by Peps Industries (Plaintiff) against Kurlon Ltd (Defendant) in connection with the former’s registered mark, ‘NO TURN’.
- Seeking the vacation of the temporary injunction, the Defendant argued that it had been using the trademark since the year 2007, before the filing date of Plaintiff’s application for registration.
- It was added that the Defendant used the ‘NO TURN’ mark along with its brand KURLON which was a well-established and reputed brand in mattresses and hence there can be no confusion.
- The Plaintiff contended that the Defendant was not using the mark ‘NO TURN’ continuously and the term was used to represent the particular characteristic of its mattresses which did not require to be ‘turned over’ after a long period of use.
The Court perused a series of judgements passed by the Supreme Court on the rights of the registered trademark vis a vis a prior user under Section 34 of the Trade Marks Act and deduced them as under:
- Rights of the registered owner of the trademark though exclusive, are subject to various provisions and thus not absolute.
- The rights of a person alleging passing off the goods of the other party as that of its own, emanate from the common law and not from the provisions of the Trade Marks Act and thus, independent from the rights conferred by the Act.
- The right of the registered owner of the trademark is not higher to the right of the person using an identical trademark if the other party has been continuously using the said trademark before the user of the trademark by the registered owner.
- The user by the other party has to be continuous, distinct from the user which is separate, isolated or disjointed and requires the commercially continuous use of the mark concerning the same goods or services.
- A defendant seeking to set up a defence of prior use has also to prove the volume of sales. Mere issuance of an advertisement would not constitute use of the mark.
The Court observed that the collective reading of the Trade Marks Act indicated that the action for passing off, which is premised on the rights of the prior user generating goodwill, shall be unaffected by any registration provided under the Act.
The Court stated that from the invoices as placed on record by the Defendant, it was evident that though it was using ‘NO TURN’ from the year 2007, the sales were intermittent in the various years and did not indicate a continuous and voluminous use of the mark.
The interim injunction was accordingly vacated.
Edited by J. Madonna Jephi
Approved & Published – Sakshi Raje
- Case of Peps Industries Private vs. Kurlon Limited, CS (COMM) 174/2019 with IA 4871/2019 & IA 6715/2019, decided by the High Court of Delhi on March 16, 2020.