Goodwill, misinterpretation and damage to be established in a trademark infringement case: Delhi High Court

Actions of infringement of trademark have a public interest element of protecting customers at large from the possibility of confusion. The Supreme Court bench consisting of J. Rajiv Sahai Endlaw decided upon the criteria to determine trademark infringement in the case of Roland Corporation v. Sandeep Jain & Ors. [CS (COMM) 565/2018 & CC (COMM) No. 6/2018].

The plaintiff is a company incorporated in Japan in1972 and is the registered proprietor of various trademarks including BOSS, RODGERS, RSS, EDIROL and ROLAND. The trademark BOSS had been registered in favour of the plaintiff in India, in Class 9 and 15, with effect from 2nd July, 2004. The plaintiff through Rivera Digitec (India) Pvt. Ltd., their distributor, has been importing products bearing the trademark BOSS to India since 1993 and have acquired an excellent reputation for the same. The defendant Hi Tone Electronics, of which Sandeep Jain is the proprietor and Janata Electronics the retailer, is engaged in similar business under the trademark of BOSS and also exporting under the trademark of Hi Tone BOSS (registered under Class 9).

The plaintiff instituted a suit against the defendants in the year 2007 to restrain them by way of permanent injunction from passing off their goods as that of the plaintiffs by using the trademark BOSS or Hi Tone BOSS and for ancillary reliefs. Relief was granted to which the defendants contested by filing a written statement along with a counter0claim, pleading that that the trademark was being used by the defendants and registered well before the plaintiffs started using it and that the defendant was not trying to ride on the goodwill of the plaintiff. A counter claim was again filed by the plaintiffs to the same.

The HC relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited [(2018) 2 SCC 1], wherein it was observed that “(a) to prove and establish an action of passing off, three ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation by the defendant and damage; (b) the test, of whether a foreign claimant may succeed in a passing-off action, is whether his business has a goodwill in a particular jurisdiction, which criterion is broader than the “obsolete test” of whether a claimant has a business/place of business in that jurisdiction; if there are customers for the plaintiff’s products in that jurisdiction, then the plaintiff stands in the same position as a domestic trader; (c) the overwhelming judicial and academic opinion all over the globe, therefore, seems to be in favour of the territoriality principle which should apply to this country also; (d) to give effect to the territoriality principle, the Courts must necessarily have to determine if there has been a spillover of the reputation and goodwill of the mark used by the claimant who has brought the passing off action; and, (e) if goodwill or reputation in the particular jurisdiction i.e. in India is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off”.

Though the court, through its findings, concluded that the plaintiff was not entitled to any injunction or ancillary relief and also that the defendants claim about regarding injunction against the plaintiff would not succeed. However, since the actions of infringement of trademark also have a public interest element of protecting the customers at large from the possibility of confusion, a decree was passed in favour of the plaintiffs.

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