In Indian Patent Filings Surpasses Figures of International Patent Filings
The Indian Patent Office has recently witnessed the achievement of a remarkable milestone. The number of domestic patent filings for the quarter Jan-Mar, 2022 has been more than the international patent filings, reportedy for the first time in 11 years.
Delhi HC protects Arcuate Stitching Design Mark of Levis
Importance and Challenges of protecting a Pattern Mark
Even though our law does not specifically recognize pattern marks as a category of marks, we can see that the Indian Trade Marks Registry, as well as the Indian Judiciary have shown activeness in the registration and protection of a pattern mark in India.
AND THEN THERE WERE NONE – Agatha Christie Ltd vs. Registrar of Trademark
In a recent case, the Hon’ble Delhi High Court has shoved a huge stop-sign on orders wherein Intellectual Property offices in India, while refusing registration have failed to provide adequate reasoning or explanations for the decision.
Liberty to file afresh does not warrant forum shopping
Recently, the Division Bench of the Delhi High Court in a case adjudicated upon an appeal seeking to set aside an interim injunction, even though the same relief was refused by other Courts. The Court laid down key aspects in instance of forum shopping and its condemnation.
Indian Patent Filings Surpasses Figures of International Patent Filings
By Vikrant Rana and Renu Bala Rampal
Gradual upsurge in year-on-year number of domestic patent filings achieved a remarkable milestone in the quarter Jan-Mar, 2022, when it surpassed the number of international patent filings at the Indian Patent Office (IPO) for the first time in 11 years. Total 19796 patent applications were filed with the IPO out of which 10706 i.e. 54.08% were filed by the Indian applicants against 9090 by non-Indian applicants. Parliamentary committee in its report in July, 2021 said that in 2019-20 domestic patent filings had a share of 36% in total patent filings in India and the main reason cited was lack of awareness of IPRs in India.
Graph: Quarter-wise patent applications filed by Indian applicant vis-à-vis non-Indian applicant
Source: PIB press release
This feat was appreciated by the Union Minister of Commerce and Industry, Shri Piyush Goyal and the efforts made by the DPIIT and IP office on strengthening the IPR regime in India and increasing IP awareness among all strata of society were acknowledged.
Key features taken by the Indian Government which boosted India’s IP regime includes fee concessions like 10% rebate on online filing, 80% fee concession for Start-ups, Small entities and educational institutions, and provisions on expedited examination for start-ups and MSMEs along with other categories.
The collective efforts made by the several stakeholders including the Government and its National IPR policy has transpired into the following achievements for India:
- More than 50% of increase in patent filings in 7 years from 42763 in 2014-15 to 66400 in 2021-22.
- Around five times increase in grant of patents in 2021-22 (30,074) as compared to 2014-15 (5978).
- Reduction in time of patent examination from 72 months in Dec 2016 to 5-23 months at present, for different technological areas.
- Improvement in ranking of India in Global Innovation Index from 81st in 2015-16 to 46th in 2021.
Shantanu Mishra, Patent Agent at S.S. Rana & Co. has assisted in the research of this article.
Delhi High Court protects Arcuate Stitching Design Mark of Levis
By Ananyaa Banerjee and Ragini Ghosh
LEVI STRAUSS AND CO. v. IMPERIAL ONLINE SERVICES PRIVATE LIMITED & ORS.
In the latest decision, set to become landmark precedent in the sphere of protection of non-traditional trademarks in India, Mrs. Pratibha M. Singh, J. vide speaking order delivered on March 24, 2022 has ruled to protect the ‘Arcuate Stitching Design’ mark belonging to Levi Strauss & Co. (plaintiff in the present matter) against the principal defendant, Imperial Online Services Private Limited, in the matter of Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. & Ors., CS (COMM) 657/2021 & I.A. 16736/2021.
As observed by Justice Singh in the judgement,
- Under the law of trade marks, the definition of `mark’ has evolved over time. Traditionally, trademarks included names, words, devices, logo, label/packaging, letters, numerals etc. However, this list of trademarks has expanded over the years to include colour, combination of colours, shape of goods, patterns of products, smell, and sound marks etc. These broad two categories of marks are loosely referred to as – • Traditional Trademarks
- Non-Traditional Trademarks.
The non-traditional trademark in question in the present case was the ‘Arcuate Stitching Design’ mark, duly protected under trademark registration no. 851939, belonging to Levi Strauss & Co., and an ubiquitous feature on all of their jeans:
Since 1873, Levi Strauss & Co. has been a pioneer in the development of denim pants most popularly known as “jeans”. Levi Strauss & Co. and Jacob Davis were granted a patent in the United States for an “Improvement in Pocket-Opening Fastenings” as far back as 1873, namely for riveted pockets, and making work pants stronger and more long lasting for working men. The brand has since revolutionized casual clothing with iconic and innovative styles, still being carried on today, and has emerged as one of the most popular brands in clothing worldwide with astonishing customer recall. Levis jeans and garments, under its various trademarks and brandings are widely available in mass-channel retail stores around the world, including all over India, providing value-conscious consumers with products from a company with a history of producing high-quality clothing.
Imperial Online Services Private Limited is a private company that was incorporated on 10 July 2012 and is not publicly traded. It is a private limited company with its headquarters in Hyderabad, Telangana. The company’s four (4) directors were also impleaded as defendants in the present case.
Facts of the Case
Plaintiff, Levi Strauss & Co. filed a suit before the Hon’ble Delhi High Court seeking a permanent injunction restraining trademark infringement, copyright infringement, passing off trademark, and other reliefs in respect of the ‘Arcuate Stitching Design‘ mark, including prayer for the non-traditional trademark in question, namely the ‘Arcuate Stitching Design‘ mark, to be declared as ‘well-known’ within the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999.
According to the Plaintiff, the said mark was adopted in 1873 and is used on all textiles, including denim jeans, which the Plaintiff manufactures and sells.
Being aggrieved by the Defendants’ conduct of selling denim jeans featuring the identical ‘Arcuate Stitching Design‘ mark over various e-commerce platforms such as Amazon, Flipkart, Myntra, Snapdeal, LimeRoad, Nykaa Fashion, Paytm Mall, and urbanofashion.com, the Plaintiffs had issued legal notices to the Defendants. Thereafter, in compliance thereto, Defendants had executed undertakings as of February 16, 2021, inter alia acknowledging the Plaintiff’s rights in the ‘Arcuate Stitching Design‘ mark and, in recognition thereof, promising to cease all use of the said mark and remove all goods bearing the impugned mark from circulation within six (6) months thereof (i.e. by 15 August 2021). However, despite so undertaking, the Defendants had been found to be continuing to manufacture and sell denim jeans bearing the Plaintiff’s ‘Arcuate Stitching Design‘ mark, leading to the Plaintiff being forced to file the present suit before the Hon’ble Delhi High Court in order to protect their rights.
On 22nd December, 2021, upon being satisfied with the Plaintiff’s prima facie case, the Court had granted the Plaintiff an interim injunction, inter alia prohibiting the Defendants from manufacturing, marketing, offering for sale, and selling, whether directly or indirectly, and whether on the internet or otherwise, any goods, most notably denim jeans, bearing the the Plaintiff’s ‘Arcuate Stitching Design’ mark.
The Defendants had filed a written statement requesting an initial extension of six months for the disposal of the stock, but the same could not be adhered to diligently due to the pandemic period and associated lockdowns. However, the Court had prohibited the Defendants from infringing the Plaintiff’s mark, and that even the exhibition of images attributed to the Defendants on e-commerce platforms would violate the Court’s injunction order.
Defendants had submitted that they are willing to suffer permanent injunction against use of the impugned mark, however object to the damages amounting to 8.5 lakhs as being claimed by Plaintiffs.
Whether a stitching pattern is protectable as a Trademark?
The Plaintiff had sought protection for the ‘Arcuate Stitching Design‘ mark, being encompassed under Section 2(m) of the Trademark Act, 1999, which defines a (trade)mark as being: “ a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof;”.
The case considered whether the stitching pattern, which is not the product design, but merely a pattern incorporated onto the Plaintiff’s products, serves as a trademark, insofar as associating the jeans with the Plaintiff. Upon deliberation by the Hon’ble Bench, the answer was concluded in the affirmative. Since the trademark owner’s stitching pattern, even in the absence of a corresponding name or a logo, uniquely identifies the jeans as emanating from the Plaintiff, the pattern fulfils its purpose in serving as the Plaintiff’s trademark.
Plaintiff referred to the ruling passed in Lois Sportswear, USA, Inc. v. Levi Strauss & Co., 631 F. Supp.735 (S.D.N.Y. 1985), wherein the United States District Court for the Southern District of New York had held as follows: “Based on the foregoing analysis, Levi’s arcuate mark is a strong mark that qualifies for a high degree of protection.” Apart from its indisputable registration as a trademark, the Levi’s ‘Arcuate Stitching Design‘ mark was held to be a fanciful design that serves no purpose other than as a source indicator. Thus, the US District Court determined that the ‘Arcuate Stitching Design’ mark is fanciful and deserving of protection as a registered trademark and their decision was further upheld by the United States Court of Appeals, Second Circuit in Lois Sportwear, U.S.A., Inc., v. Levi Strauss & Co. 799 F.2d 867 (1986).
In the further referred case of Levi Strauss Co. v. Abercrombie Fitch, 633 F.3d 1158 (9 th Cir. 2011), the United States Court of Appeals, Ninth Circuit, had recognized Plaintiff’s unarguable rights in the value of their trademark, the ‘Arcuate Stitching Design’ mark, as clothing bearing the said mark had amounted to 95% of their total revenue over the past thirty (30) years!
The court, in the present case recognized the Plaintiff’s registered and valid statutory trademark rights in the ‘Arcuate Stitching Design’ mark, globally as well as in India, and were pleased to decree the matter in favour of the Plaintiff, as Defendants had already submitted to permanent injunction, and awarded nominal costs (to the tune of 4 lakhs) to the Plaintiff, in order to bring an end to the matter expeditiously. Furthermore, a decree declaring the said mark to be a ‘well-known’ mark was passed.
The present case is an extremely lucid recognition of non-traditional trademarks and looks set to be cited and relied upon in future matters pertaining to similar subjects. That a stitching design, incorporated only as a pattern upon clothing can serve as a source identifier will open the doors for other source-indicating patterns to be recognized as (non-traditional) trademarks and offer much needed protection against infringement of the same, especially since the clothing and fashion industry is susceptible to rampant counterfeiting. Additionally, its declaration and inclusion in the Registry’s list as a well-known trademark is also welcome for such an iconic design element.
The court’s stance in taking a strict stand against online use of the impugned mark is also a relief to rights holders because it is a common problem for infringers to plead inability/delay in taking down infringing images online as compared to assuring that physical misuse has ceased, which is more difficult to verify, and thereby continue to infringe registered trademarks by surreptitious online sales.
Challenges of protecting a Pattern Mark And Its Importance
By Ananyaa Banerjee and Sandhya A. Parimala
Pattern marks are the marks consisting of patterns / designs that are capable of identifying the goods or services as originating from a particular organization/company. Pattern marks help in uniquely identifying a brand due to its eye catching visual, and makes it easy for customers to find the products with the pattern sans the brand name. The use of a registered mark in the pattern may render the said mark distinctive as a whole.
POSITION OF PATTERN TRADE MARKS IN DIFFERENT JURISDICTIONS
POSITION IN THE EUROPEAN UNION
The EU law specifically defines a pattern mark and the same is therefore officially recognized as a trade mark under the EU law. A pattern mark is a trade mark consisting of elements in a regularly repeated pattern.
A pattern mark is required to be represented by way of submitting a reproduction showing the pattern repetition. Further, the Applicant may also file a description detailing the repetition of the pattern in a regular manner.
The reproduction of the pattern mark may be submitted by showing the reproduction in one single .jpeg file or on one single A4 sheet. Further, the description if any, must accord with the representation and not extend its scope, and colour, to the extent that they form an integral part of the description, may be indicated therein.
POSITION IN THE UNITED STATES
According to the US law, a repeating-pattern mark is a mark which is composed of a single repeated element or a repeated combination of designs, numbers, letters or other characters in a pattern. The said may be on the whole surface of the product or on a portion of the relevant item.
The repetition of the mark’s elements is a property of a repeating-pattern mark that must be adequately defined in the application. The fact that the mark illustrated in the drawing is utilized in a recurring manner on the relevant objects is not a sufficient foundation for treating the mark as a repeating-pattern mark on its own. That is, the applicant may not be seeking a registration in which repetition is a feature of the mark, despite what is represented in the specimen. As a result, there must be some indication in the mark description or on the artwork that the mark is made up of a repeating pattern.
A pattern mark may be inherently distinctive if unique when used in connection with the relevant goods or services. However, since the pattern marks frequently serve the ornamental function when applied for goods/services, they may not be inherently distinctive as the said marks are perceived to be an ornamentation or background matter serving no source-indicating function. Therefore, the determination of the inherent distinctiveness depends upon the impression created when the mark is used in connection with the identified goods or services. In case the consumers do not perceive these patterns as source indicators, the pattern marks may not be registered without proof of acquired distinctiveness.
The following are the relevant considerations when determining inherent distinctiveness of the pattern mark:
- If the mark is a common or widely used pattern.
- If the pattern creates a distinct commercial impression apart from other matter.
- Nature of elements in the repeating pattern.
- Industry Practice.
- Type of product.
Further, at some instances, pattern marks may serve a functional purpose, i.e a pattern mark could serve a utilitarian function, which is essential to the use of the product or affects the cost or quality of the item, or an aesthetic function, which does not have a truly utilitarian function in terms of the product’s use or performance, but nonetheless provides a real and significant competitive advantage. For example, a camouflage pattern for a product which is required to be concealed or hidden performs a utilitarian function. In such case, the registration of a pattern mark is refused registration.
Some of the examples of pattern marks registered in the USPTO are: (1) the repetitive diamond pattern on the cloth speaker grill of a musical instrument amplifier by Vox Amplification Limited (); (2) repeating pattern of “AV” on the face of a watch by ABS-SLG, LLC ().
POSITION OF PATTERN TRADE MARKS IN INDIA
In India, a pattern mark is not defined under the provisions of the ATrade Marks Act, 1999. However, a pattern may be registered in India, if it satisfied all the necessities of a trade mark as mentioned in Section 2(1)(zb) of the Trade Marks Act, 1999. Therefore, a pattern mark may be registerable in India, if it is (1) capable of graphical representation; (2) capable of distinguishing the goods from one person to the other.
A pattern mark can be represented graphically therefore satisfying the first requirement. Further, a pattern mark should be capable of uniquely identifying the source of a product/service. Therefore, for a pattern mark to be registered, it is required that they are highly distinctive and should be able to create impression in the minds of general public, with respect to their source of origin.
We can see many pattern marks registered with the Indian Trade Marks Registry under the category of “device marks”. Some of the examples of pattern marks registered in India are given below:
|Application No.||Trade Mark||Applicant||Application Date||Class|
|861146||Louis Vuitton Malletier||June 15, 1999||18|
|1104552||Burberry Limited||May 14, 2002||09|
|2892932||Burberry Limited||January 29, 2015||03, 09, 14, 18, 24, 25|
Even the judiciary appears to recognize the pattern marks as trade marks and has in fact protected various pattern marks from counterfeiting. In the case of Louis Vuitton Malletier v. Mr. Manoj Khurana & Ors, the Hon’ble Delhi High Court held that the trade marks associated with the plaintiff including the LV Logo, the Toile Monogram and the Daimer pattern are well-known throughout the world and, therefore, the Hon’ble Court granted permanent injunction against the defendant for infringing the trade marks of the plaintiff including the Daimer pattern mark.
CHALLENGES FACED IN THE PROTECTION OF A PATTERN MARK
The main challenges faced by the proprietors of a pattern mark are:
- Proving the distinctiveness of a pattern mark: Identifying a product only by of its pattern without the absence of any word element would be little difficult and is a challenge to the proprietor to prove that the public identifies the product only with the pattern by way of inherent or acquired distinctiveness. Proving this in practicality might be difficult. If customers do not perceive the pattern as a trade mark exclusively and independently, it does not qualify as a trade mark. Further, it might be difficult to explain the distinctiveness of the pattern mark during enforcement actions and during the period of oppositions. Moreover, in many situations, a pattern is usually perceived as an ornamentation or background and serves no source indication function.
Even though our law does not specifically recognize pattern marks as a category of marks, we can see that the Indian Trade Marks Registry, as well as the Indian judiciary have shown activeness in the registration and protection of a pattern mark. This makes it clear that prosecution and enforcement of such marks is much easier as compared to other non-conventional marks. Increase in the number of flings will give further clarity on the registration process and requirements for registering such kind of marks.
 Article 3(3)€ EUTMIR.
 EUTM 017993008
 EUTM 005365754
 Trademark Manual of Examining Procedure § 1202.19
 Trademark Manual of Examining Procedure § 1202.19(e)(i)
 Trademark Manual of Examining Procedure § 1202.19(e)(i)(A)
 Trademark Manual of Examining Procedure § 1202.19(e)(i)(B)
 Trademark Manual of Examining Procedure § 1202.19(e)(i)(C)
 Trademark Manual of Examining Procedure § 1202.19(e)(i)(D)
 Trademark Manual of Examining Procedure § 1202.19(e)(i)(E)
 Trademark Manual of Examining Procedure § 1202.19(i)
 Registration No. 3679828
 Registration No. 3342382
 Section 2(1)(zb), Trade Marks Act, 1999: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;
 2015 SCC OnLine Del 11683
Sandhya A. Parimala, Associate at S.S. Rana & Co. has assisted in the research of this article.
AND THEN THERE WERE NONE – Agatha Christie Ltd vs. Registrar of the Trademark
By Pranit Biswas and Bhanu Dhingra
There have been many cases overtime, wherein IP offices in India, while refusing registration, have failed to provide adequate reasoning or explanations for the decision. However, a recent case of the Hon’ble Delhi High Court has shoved a huge stop-sign on such Orders. Unreasoned orders? And then there were none, hopefully.
The Hon’ble Delhi High Court recently remanded such a case back to the Registrar of Trademarks, and interestingly, the case was regarding the trademark ‘AND THEN THERE WERE NONE’, and yes, it belonged to the late Dame Agatha Mary Clarissa Christie, Lady Mallowan (or her company rather). ‘AND THEN THERE WERE NONE’ is the title of arguably the most famous work of Agatha Christie, which was published 80 years ago.
Background of the case:
Agatha Christie Limited was established in 1955 by the author herself and is now being operated and managed by her great-grandson, Mr. James Prichard. The company had filed an application for registration of the trademark “AND THEN THERE WERE NONE” on December 05, 2017 in Classes 9, 16 and 41 of the Trademarks Rules, 2017. As per the records of Trade Mark Registry, the particulars of the said trademark owned by the Appellant/Applicant i.e., Agatha Christie Limited are as follows-
|Trademark||App. Number||User Claim||App. Dt.||Class||Status|
|AND THEN THERE WERE NONE||3695699||Proposed to be used||December 05, 2017||9, 16, 41||Refused|
Initially, the Registry had issued an Examination Report/ Office Action dated January 04, 2018 in respect of the application, wherein an objection was raised under Section 9(1)(a) of the Trademarks Act, 1999, that the mark is non-distinctive. The Applicant had filed a reply to the office action and the matter had come up for hearing as well (wherein material was submitted in support of the application), the Deputy Registrar of Trademarks was not having it, and the application was finally refused vide an Order dated January 14, 2021, order available here. Relevant excerpt from the Order is pasted below:
Being aggrieved, the Applicant filed a suit in the Hon’ble Delhi High Court.
The Appellant had contended that as on the date of the application filing, no mark, even remotely similar to ‘AND THEN THERE WERE NONE’ was on record on the Register, either in regards to the goods and services for which registration was sought by the appellant, or in respect of any other goods and services.
Findings of the Court
Funnily, in the Order dated December 08, 2021, the Learned Justice Mr. C. Hari Shankar has mentioned that at the very outset of the proceedings, he had enquired with the counsel for the Respondent (Trademarks Registry) that whether they have any objection to him adjudicating the matter, as he is an avowed aficionado and admirer of Agatha Christie! To which the Respondent’s counsel answered in the negative, and asserted that he himself is a fan!
In this regard, the Court had clearly noted that the only ground on which the mark has been refused is that it is not distinctive, and that the mark, in fact, is prima facie distinctive for the goods applied for, and neither is the mark descriptive.
The Hon’ble Court also noted that grounds for refusal can only be the ones enumerated under Sections 9, 11 and 13 of the Trademarks Act, 1999, and in the absence of any suitable objection under the said sections, a request for registration simply cannot be refused.
The Hon’ble Court also delved into the very nature of a trademark and observed that as per the Act, while looking at such marks, the criteria to count as a trademark is that the same must be capable of being represented graphically and must be capable of distinguishing the goods of one person from those of others. In this regard, the Hon’ble Court noted that there is no such observation in the impugned Order of the Registry. It was further noted that as the mark in question is the title of the most famous book of Agatha Christie, it is also capable, prima facie, of creating an association between the name and the appellant, which is a company established by Agatha Christie herself. The Hon’ble Court stated in this regard that if the mark is distinctive, and is not identical or confusingly or deceptively similar to any earlier mark which is registered or in use from a prior date in respect of similar goods or services, or which results in the passing off, by the applicant, of its goods or services as those of another, registration of the mark is a matter of right.
Upon perusal of the facts and order, the Hon’ble Delhi Court held that the order was ex facie unsustainable, both on facts and in law.
The court while allowing the Appeal, thus quashed the impugned order and set it aside. The matter has been remitted to the office of the Registrar of Trademarks with the direction that, if the application of the appellant does not suffer from any other fatal infirmity, the mark ‘AND THEN THERE WERE NONE’, as sought by the Appellant, be registered under Classes 9, 16 and 41 of the Trade Marks Act, 1999 and Trade Marks Rules, 2017.
The primary purpose of any trademark is to guarantee the identity of the provenance of the goods or services to the consumer. In order to fulfil its purpose, a trademark must be able to distinguish its goods and services from those of others.
In this instant case, the Hon’ble Court discussed the importance of the right and freedom to trade, including the register trademarks and seek trademark protection. It was clarified that the trademark must be distinguishable and recognized in order to be protected and that if it does not attract any objection as enshrined under sections 9, 11 and 13 of the Act, the mark must be registered.
The Hon’ble Court in this case clearly noted that the impugned order could not explain the grounds of refusal or sustain in facts or law. The Delhi High Court ruled that there was no ground based on which the mark could have been rejected under the Trade Marks Act, 1999, as the mark was not descriptive and because no similar marks were existed on the Register.
Most importantly, the decision reinforces that trademarks cannot be refused registration lightly, and orders must be well reasoned and must definitively expand upon objections as laid down under Sections 9, 11 and 13 of the Act.
Liberty to file an afresh does not warrant forum shopping
It is not an unknown fact that Courts in Delhi are IP savvy, given the plethora of judgments passed by the Delhi High Court concerning IPR laws, wherein the Courts are known for proactively protecting the rights of the parties, based upon the merits of the case.
Recently, a Division Bench of the Delhi High Court in the case of Black Diamond Track Parts Pvt. Ltd. & Ors. vs. Black Diamond Motors Pvt. Ltd. adjudicated upon an appeal seeking to set aside an interim injunction that was granted against the Defendants’ alleged infringement of the Plaintiff’s trade mark BLACK DIAMOND, even though the same relief was earlier refused by a District Court in Bilaspur as well as the Chhattisgarh High Court.
Brief Facts of the case
The suit, from which this appeal arises, was filed by the Respondent (Plaintiff before the Trial Court) inter alia pleading that it was carrying on the business of manufacture and sale of Trippers, Tip-Trailers, Flat Bed Trailers, Ash Handling Bulkers and Tailor made Carriers (hereinafter called “subject goods”) since 2005.
The trade mark ‘BLACK DIAMOND’ was being used by the family of the Directors of the Respondent, since the year 1983, in relation to a number of businesses. As per the Respondent, the word ‘BLACK DIAMOND’ is the most essential feature of its trade mark / label. Under an oral family settlement between the members of the family of the Directors of the Respondent, the right to use the trade mark ‘BLACK DIAMOND’ in relation to the subject goods came to the Respondent, and the right to use the same mark for manufacturing of mining machinery and spares was given to the Appellant (Defendant No. 1 in the Trial Court). With this arrangement, it was jointly agreed by the family members that they will not interfere or compete in one another’s business.
Due to the success and goodwill garnered by the Respondent in the said industry, the Respondent had also applied for registration of the trade mark ‘BLACK DIAMOND’ and its formative variants in relation to goods under Class 12 i.e. the goods that were part of the suit, sometime in 2009.
Arguments on behalf of the Plaintiff (In Trial Court)
The Appellants are not entitled to use the trade mark ‘BLACK DIAMOND’ in relation to subject goods, in view of the family settlement.
After four years of the family settlement, the Appellants started acting in breach of the settlement by carrying on business in subject goods in the name of BLACK DIAMOND. The Appellant No.1 also applied for registration of the mark BLACK DIAMOND TRAILER TECH and BLACK DIAMOND TRACK PARTS in Class 12, sometime in the year 2018, with a user claim since January 28, 1991.
The adoption by the Appellants of the trade mark ‘BLACK DIAMOND’ in relation to the subject goods is dishonest and mala fide. From the website of the Appellants it is evident that they have entered into the business of subject goods, only in or about 2017-2018.
These actions of the Appellants amount to trade mark infringement and are also in breach of the family settlement.
Time- line of the Plaintiff’s Suit and Reason for Appeal
The suit for infringement was filed for the first time in 2018 before the District Judge in Bilaspur, Chhattisgarh. However, the Court dismissed the application of the Respondent for interim relief.
The Plaintiff failed to obtain a favourable order in appeal before the High Court of Chhattisgarh as well.
Thereafter, an application to withdraw the suit was filed, with liberty to apply afresh, which was allowed.
After a period of six months, the Plaintiff filed the suit afresh before the Commercial Court, South District, Saket Court, Delhi. It was here when the Learned Single Judge, while issuing summons, granted an ex-parte interim order against the Appellants, without taking into consideration that the Respondent since the year 2018 had been unsuccessful in getting the interim relief in the proceedings, which were earlier instituted in the Courts at Bilaspur and that even the High Court of Chhattisgarh had also not found that the Respondent was entitled to any interim relief. In view thereof, the Appellants filed an appeal against the said impugned order.
Observations by the Division Bench
The Hon’ble Division Bench of the High Court of Delhi, while deciding the appeal in question analysed the ingredients of a prima facie case, particularly, irreparable loss and injury, and the balance of convenience, required to be satisfied for granting an interim injunction.
The Court while observing that to an ordinary, unwary customer and purchaser, use of trade mark/label ‘BLACK DIAMOND’ is quite likely to cause confusion regarding the true source of the goods allowed the application of the Respondent for interim relief and restrained the Appellants.
It was additionally noted by the Court that in the impugned order, there was no discussion or analysis of the merits of the pleas and contentions of the respective parties and no reason had been given as to why the Commercial Court accepted the arguments and contentions of the counsel for the Respondent and rejected the arguments of the counsel for the Appellants.
The Court held that the “impugned order does not meet the parameters prescribed to constitute a judgment, as an order on an application under Order XXXIX Rules 1&2 of the CPC is, since determines the rights of the parties. The impugned order, in our view, is liable to be set aside on this ground alone… though there can be no doubt that once the suit is permitted to be withdrawn with liberty to file afresh, no pleas, on the basis thereof can be taken in the subsequent suit, of Order II Rule 2 of CPC or of res-judicata etc., but in our view nothing prevents the Court from, at least at the stage of grant/non-grant of interim relief, taking notice of the said facts to test the bona fides of the Respondent/Plaintiff.”
The Court while taking note of the fact that the Plaintiff had withdrawn the suit from Bilaspur with the intent of filing it in Delhi, elaborated upon the concept of forum shopping and stated that it amounts to the abuse of the process of the Court and needed to be strongly condemned. The Court enquired from the counsel on behalf of the plaintiff as to why the plaintiff should not be disentitled for any interim relief, when they’ve indulged into the act of forum shopping. The plaintiff placed reliance on Chhaganlal Pratapchand Vs. State of Gujarat and Patel Chunibhai Dajibhai Vs. Narayanrao Khanderao Jambekar, which were then aptly distinguished by the Hon’ble Court, which held that “if the practice, as indulged in by the respondent/plaintiff were to be approved of and encouraged, then considering the multiple options of territorial jurisdiction available to a plaintiff in a suit for permanent injunction to restrain infringement of trade mark and/or passing off, a plaintiff, after failing to get interim relief in one Court, would successively approach other Courts, making litigation a game of chance and a mockery of. Such conduct, we have no doubt whatsoever, amounts to abuse of the process of the Court and needs to be strongly condemned”. With these observations, the Hon’ble Division Bench allowed the appeal.
Author’s Note: The Hon’ble Court laid down certain key aspects to be taken into consideration, especially in cases wherein there seems to be a prima facie instance of forum shopping. The Hon’ble Court also noted that it was essential to decide upon the plaintiff’s bona fides in such an instance and that such behaviour should be strongly condemned to discourage such practices.
 FAO(COMM) 41/2021
 1969 SCC OnLine Guj 10
 AIR 1965 SC 1457