13 August, 2018
In the matter of Jaideep Mohan v. Hub International Industries & Anr. ,5 the Delhi High Court (‘Delhi HC ’) summarily dismissed the suit for trademark infringement at the initial stage of framing of issues.
Jaideep Mohan (‘Plaintiff ’) had instituted the suit, inter alia , for permanent injunction to restrain Hub International Industries and NV Distilleries & Industries Pvt. Ltd. (‘Defendants ’), from using the trade mark ‘GOLDSMITH ’ on the grounds that the same is deceptively similar to the Plaintiff ’s registered trademark ‘BLACKSMITH ’ in respect of identical goods i.e. , alcoholic beverages.
The Defendants contended that the Plaintiff cannot claim exclusivity in the mark ‘SMITH ’ as the application for registration of the mark ‘SMITH ’ in class 33 (which covers alcoholic beverages) was still pending, and, accordingly, argued that the Plaintiff ’s suit was liable to be dismissed under Section 17 of the Trade Marks Act, 1999. The Defendants also contended that there are many entities which have been using the word ‘SMITH ’ and ‘BLACKSMITH ’ prior to the use of the word by the Plaintiff and that the overall packaging and get-up of the rival goods are completely different.
The Delhi HC , relying on Godfrey Philips India Ltd v. PTI Pvt Ltd ,6 summarily dismissed the suit for infringement and passing off and took the view that the terms ‘BLACKSMITH ’ and ‘GOLDSMITH ’ have a definite meaning and are clearly understood by most of the population of the country, including those who are not conversant with the English language, and hence there was no infringement and the suit was not likely to succeed. The Delhi HC was also persuaded by the fact that more than 90% of the sales of the Plaintiff were effected through defense and police canteens, where the relevant public was unlikely to get confused merely by the commonality of the term ‘SMITH ’.
5 2018 (74) PTC 154 (Del).
6 2017 SCC OnLine Del 12509.
For further information, please contact:
Zia Mody, Partner, AZB & Partners
zia.mody@azbpartners.com
