Lack of credibility in proof of prior use and deceptive similarity of trademarks
The Single Bench of the Delhi High Court (the “Court”) in Alphavector India Pvt. Ltd. v. Sach Industries and Ors., CS (COMM) 691/2022, made the interim order dated 11 October 2022 absolute pending the disposal of the suit in favor of the Plaintiff and against the Defendants thereby preventing the Defendants from using the trade mark “99/NINETY NINE” vis-à-vis the Plaintiff’s trade mark “91/NINETY ONE” in relation to bicycles.
The Court observed the following based on the following parameters:
I) Lack of Credibility in proof of prior use
· The details/documents furnished by the Defendants did not evidence the prior use of its trade marks. Further, invoices submitted in the Trade Marks Registry for user affidavit comprised of the label mark “99/NINETY NINE” whereas the same dated invoice submitted in the written statement in the Court proceedings did not contain the trade mark which ipso facto make the invoices denude of credibility.
· The social media accounts such as Facebook posts also highlight that the Defendants trade mark was subsequent to the adoption and use of the Plaintiff’s trade mark.
· There was no claim of prior use by the Defendants in its reply to the Plaintiff’s cease and desist letter as well as in suit instituted by the Defendants in Ludhiana.
· The Plaintiff’s “91/NINETY ONE” trade mark being an arbitrary trade mark in relation to its goods is entitled to greater protection under the Trade Marks Act, 1999 (the “Act”).
· The Defendants have no explanation as to the adoption of its trade mark “99/NINETY NINE”.
· The Defendants’ adoption of the trade mark “99/NINETY NINE” is intended to confuse an average consumer of imperfect collection between the “99” bicycle of the Defendants and the “91” bicycle of the Plaintiff.
The Court arrived on the aforesaid observations based on the two important principles which although do not emanate directly from the Act but are enunciated in furtherance of its objectives and to ensure its proper implementation:
(i) where there is clear imitation with an intent to deceive, the Court may presume that the intent to deceive is successful ; and
(ii) where there is intent to deceive, the Court must pay greater attention to the similarities between the competing marks, and avoid searching, instead, for dissimilarities.
Author: Nitin Abhishek