17 January, 2018
Who has not heard the name of legendary YEZDI motorcycle!!! At least amongst the motorcycle enthusiasts in India and probably worldwide, the name YEZDI is still a well-known brand though the manufacturing of YEZDI branded motorcycles stopped in the year 1996. It is no doubt that YEZDI motorcycles are still very popular and are available for resale in the after sale market and there are number of YEZDI fan and bike clubs in existence in several cities of India. The vintage bikes like YEZDI has always been most desirable bike in the minds of motorcycle fanatics which still stand as one of the iconic brands in Indian Motorcycle’ history.
The trademark dispute arose when Mirza International, a famous shoe manufacturer started using the mark YEZDI for their shoes. The plaintiff Mr. Boman R Irani sued Mirza for injunction from passing off its footwear with the trademark YEZDI as that of the plaintiff. The plaintiff argued that Mr. Rustom Irani, father of the plaintiff commenced using the mark from the year 1969 through a permitted use by Ideal Jawa (India) Pvt. Ltd. It was argued that Mr. Rustom Irani was originally from the province Yazd in Iran and adopted the mark YEZDI from the name of the said province in Iran. It was claimed by the plaintiff that that the YEZDI mark of the plaintiff is an iconic and well-known brand and the use of the mark YEZDI by the defendant for biking shoes/footwear is likely to create an impression in the minds of consumer. On the other hand, the Defendant inter-alia argued that they are the registered proprietor of trademark YEZDI for class 25 goods including footwear and the plaintiff had never used the mark YEZDI in respect of footwear and other goods falling in class 25. Moreover, Plaintiff also stopped using the mark YEZDI after 1996. It was contended by the Defendant that Plaintiff has also not filed any document in support of the title claimed to the mark YEZDI.
After hearing the parties, the court decided not to grant interim injunction against the defendant from using the mark YEZDI on the reasons inter-alia that the defendant are the registered proprietor of trademark for clothing and the Plaintiff himself or through anyone else is not using the mark YEZDI in relation to any good. The court noted that the acts claimed by the plaintiff amount to use of the mark are yet to be established. Although the Court retrained the Defendants from claiming or conveying that their footwear under the mark YEZDI is inspired by YEZDI motorcycles or otherwise convey any association with the YEZDI.
The court has only denied the interim injection at this stage and it will be interesting to follow the trial proceeding. If after the trial, the Defendants are able to succeed then it will be major setback for YEZDI motorcycle and its fan following.
For further information, please contact:
Omesh Puri, LexOrbis
mail@lexorbis.com
