Vijay Kumar Ahuja v/s Lalita Ahuja
Name of the Case – Vijay Kumar Ahuja v/s Lalita Ahuja
Interim Application Appeal Nos. 6268 of 2000, 3461 of 2001,
Suit Appeal No. 1354 of 2000 Decided On, 02 November 2001
At, High Court of Delhi By, THE HONOURABLE MR. JUSTICE O.P. DWIVEDI For the Appearing Parties: Mohan Singh, S.K. Bansal, Advocates.
ISSUE
Whether or not the plaintiff, Vijay Kumar Ahuja, was entitled to an interim injunction against the defendant, Lalita Ahuja, preventing her from using the trade marks MISTER, DEFENCE, ARUN, and ML, which are alleged by the plaintiff to be deceptively similar to his unregistered trade marks, on the grounds of passing off and infringement of copyright?
RULE
In trademark law, there is a very settled principle which says that common words of the language or descriptive words can’t be appropriated exclusively and as the trademarks unless the claimant is also able to show that such words have been acquired secondary meaning or distinctiveness. That is, by long and extensive use, the name or word must have become so identified with the goods of one trader that it will be recognized to point to the source of the article. This rule was reiterated in Globe Super Parts v. Blue Super Flame Industries (AIR 1966 Delhi 245), where the court held that coined or invented terms can be protected without evidence of secondary meaning, common words need evidence that they have become specially related to one trader’s products. Further, only applying for registration or the advertisement of a trade mark in the Trade Marks Journal does not convey statutory rights or amount to proof of ownership (Metro Playing Card Co. v. Wazir Chand Kapoor, AIR 1972 Delhi 248). In addition, the general principles of injunctions mandate that the plaintiff establish a prima facie case, that the balance of convenience would be in their favour, and that they will Suppose to be irreparably injured if the injunction is not granted. Where the plaintiff had secured an interim injunction through ,the misrepresentation or concealment of the material facts, such relief is subject to being vacated, as settled in many cases. Courts further state that inordinate delay or laches in starting court action can also preclude claims for interlocutory relief, particularly in the case of false assertions of timing of the knowledge of the alleged infringement (Wadlow on Passing Off).
ANALYSIS
Applying the above legal precepts to the current case, the Court noted that the marks employed by both parties (MISTER, DEFENCE, ARUN, and ML ) were ordinary language words, and the plaintiff had not brought any tangible evidence that these marks had become secondary distinctive of his goods alone or had gained secondary meaning in the marketplace. The plaintiff provided total sales figures for a period of eight years but did not break them down by individual trade marks. The Court concluded that the aggregate sales were modest, and as such, it could not be assumed that any of the marks had gained the requisite goodwill or reputation to enable exclusive appropriation. Furthermore, the plaintiff misrepresented that he came to know of the use of the contested marks by the defendant only in June 2000, while documentary proof, such as a caveat presented by the plaintiff in 1996, proved that he had known of the activities of the defendant years ago. The Court ruled that the behavior have shown constituted a violation of the equitable doctrine of clean hands and also justified vacating the injunction. The delay by the plaintiff to file the suit until 2000, knowing of the defendant’s use since at least 1996, further established laches, which militated against the grant of interim relief. Considering these factors, the Court held that the plaintiff did not establish a prima facie case and had failed to show that he was entitled to an injunction.
CONCLUSION
The Delhi High Court lifted the ex parte interim injunction that had previously been issued in favour of the plaintiff. The Court held that the plaintiff had no monopoly over the use of common words in the language as trade marks, i.e., “MISTER,” “DEFENCE,” “ARUN,” and “ML.” It also held that the plaintiff had not made out a prima facie case and was also responsible for laches and concealment of material facts, especially for misrepresenting the chronology of his awareness regarding the defendant’s use of the impugned marks. Accordingly, the defendant’s application under IA No. 5461/2001 for vacation of the ex parte injunction was granted and the plaintiff’s application under IA No. 6268/2000 was rejected. I concur with the decision, for it properly upholds fundamental principles of trade mark law such as the requirement to establish secondary meaning in cases involving common terms, the inadmissibility of equitable relief founded on misrepresentation, and the requirement to come before the Court with clean hands, particularly in cases involving interim injunctions.
