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“Trademark Infringement and Injunction Suit: Delhi High Court Grants Permanent Injunction to Heifer International in Trademark Infringement Suit Against Heifer Project India Trust”

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Case title: Heifer Project International v. Heifer Project India Trust

Case no.: CS(COMM) 542/2018 & I.As. 8255/2004, 14930/2013

Dated on: 23rd April 2024

Quorum: Justice Sanjeev Narula.

FACTS OF THE CASE

‘Classic Case of Triple Identity’: Heifer Project International (Plaintiff) has filed a lawsuit seeking various legal remedies, including a permanent injunction, against Heifer Project India Trust (Defendant No. 1) and Late Mr. Pran K Bhatt (Defendant No. 2) in his capacity as the Managing Trustee of Defendant No. 1.

The lawsuit aims to protect the intellectual property rights of Heifer Project International, specifically pertaining to the trademark “HEIFER” and associated marks, including the leaping cow device mark and the oval logo. Heifer Project International alleges that the Defendants have infringed upon their intellectual property rights by using trademarks and logos that are deceptively similar or nearly identical to their own marks.

The Plaintiff seeks a permanent injunction to restrain the Defendants from further unauthorized use of the disputed trademarks and logos. Late Mr. Pran K Bhatt, as the Managing Trustee of Heifer Project India Trust, is named as a defendant in the lawsuit, indicating that the legal action extends to both the organization and its responsible representative.

The crux of the legal dispute revolves around the alleged unauthorized use of Heifer Project International’s trademarks and logos by the Defendants, which the Plaintiff contends could lead to consumer confusion and dilution of their brand identity.

Heifer Project International aims to safeguard its brand reputation and prevent any potential damage arising from the Defendants’ unauthorized use of confusingly similar trademarks and logos. This legal action underscores the importance of protecting intellectual property rights in the commercial sphere and the willingness of companies to pursue legal remedies to safeguard their brand assets.

CONTENTIONS OF THE PLAINTIFF

The Plaintiff, Heifer Project International, is an Arkansas non-profit corporation established in 1953, originally under the laws of Indiana, USA. Its mission encompasses alleviating hunger, poverty, and environmental degradation through various sustainable development projects globally, including in India. The Plaintiff has adopted and continuously used distinctive trademarks and logos, such as “Heifer International” and “Heifer Project,” along with associated device marks, since its inception. Despite cancellations of some trademark registrations, the Plaintiff holds copyrights for these creations globally, including in India. Moreover, it has successfully registered several trademarks with the Indian Trademark Office. The extensive promotional activities undertaken by the Plaintiff, both domestically and internationally, have bolstered recognition of its trademarks. In India, the Plaintiff has a significant history of funding, fundraising, and educational services dating back to 1955. While Defendant No. 1, Heifer Project India Trust, was established with Plaintiff’s support in 1992, Plaintiff independently spearheaded initiatives in India prior to that. The “Heifer Project” mark, among others, has become synonymous with Plaintiff’s high-quality ethical programs globally, including in India. Defendant No. 1, a charitable trust, operates under the name ‘Heifer Project – India Trust,’ with Defendant No. 2, Late Mr. Pran Bhatt, serving as Managing Trustee since 1997. Defendant No. 2’s prior professional relationship with Plaintiff ended in 2003 when Plaintiff chose not to renew their contract.

Plaintiff’s Allegation: Infringing Activities and Contractual Breach by The Defendants

The Plaintiff alleges that the Defendants, despite prior authorization, have engaged in infringing activities and breached contractual obligations. The Plaintiff had granted the Defendant Trust permission to use the “Heifer” and “Heifer Project” names and associated logos under specific conditions, including adhering to Plaintiff’s mission and facilitating its activities in India. However, Defendant No. 2, in his role as Managing Trustee, began deviating from contractual obligations in 2002, particularly regarding reporting and accountability. Despite discussions and assurances, Defendant No. 2 failed to rectify these issues, leading to the non-renewal of his employment contract beyond June 30, 2003. Despite instructions to cease usage of Plaintiff’s marks and return materials, the Defendants continued to use them, prompting a Cease-and-Desist notice in March 2004, to which the Defendants responded defiantly. This continued use of Plaintiff’s marks demonstrates a clear intention to infringe and benefit from Plaintiff’s reputation. Defendant No. 2’s attempt to register the “Heifer” trademark in his name further illustrates dishonesty. Defendants’ actions, including using Plaintiff’s marks on their letterhead, constitute trademark and copyright infringement, unlawfully usurping Plaintiff’s goodwill since 1953.

CONTENTIONS OF THE DEFENDANTS

The Defendants present several defenses in their written statement, aiming to dismiss the suit. They challenge the validity of the lawsuit, arguing that the signatory lacked proper authorization under the Power of Attorney, as advocates cannot serve as ‘Constituted Attorneys.’ Moreover, they assert that the Defendant Trust is a separate entity from the Plaintiff, formed by like-minded individuals and granted FCRA license independently. Despite initial cooperation, discontent arose due to funds allegedly diverted elsewhere.

The Defendants argue that ‘Heifer’ is a common descriptive word, incapable of trademark use by the Plaintiff. They also contend that the Plaintiff falsely claims to work in India on its website and failed to communicate the severed relationship with Defendants to donors. Additionally, they dispute the Plaintiff’s continuous presence in India and the support extended to establish the Defendant Trust. Overall, the Defendants deny any obligation to work in harmony with the Plaintiff as alleged.

ISSUE –

  1. Whether this Hon’ble Court has the territorial jurisdiction to try and entertain the present suit? OPD
  2. Whether the plaint has been signed, verified and instituted by a competent person? OPD
  3. Whether the Defendant No. 1 has infringed the trade mark, trade name and corporate name HEIFER of the Plaintiff? OPP
  4. Whether the Plaintiff is entitled to the relief of permanent injunction or mandatory injunction as prayed for? OPP
  5. Whether the Plaintiff is entitled to the relief of rendition of accounts and damages and if so for what period and for what amount? OPP”

COURT’S ANALYSIS AND JUDGEMENT

Issue No. 1: Territorial Jurisdiction

The Plaintiff asserts that this Court holds territorial jurisdiction due to the Defendants’ engagement in business activities in Delhi, where their registered office is located. They argue that the cause of action arose in Delhi, as the Defendants conducted infringing activities within this territory, thus falling under Section 20(c) of the Civil Procedure Code (CPC). Conversely, the Defendants challenge the Court’s jurisdiction, claiming their office was relocated to Noida in 2002, prior to the suit’s institution. However, evidence contradicts this claim. The original letterhead and replies from Defendants, along with bank account details provided during cross-examination, indicate operations in Delhi. Although the Defendants claim to have shifted their office to Noida in 2002, their continued business activities and correspondence in Delhi suggest otherwise. Thus, the infringing use of the trademark “HEIFER” occurred within Delhi’s jurisdiction, supporting the Plaintiff’s claim for territorial jurisdiction. Consequently, Issue No. 1 is resolved in favor of the Plaintiff and against the Defendant Trust.

Issue No. 2: Competency of the Plaintiff’s Representation

The Plaintiff contends that Mr. Pankaj Srivastava, duly authorized under Powers of Attorney dated 20th September 2004 and 31st August 2005, instituted the suit. However, the Defendants challenge Mr. Srivastava’s authority, arguing that he was authorized solely as an advocate, making the suit invalid. The Defendants also raise concerns about Mr. Mahendra Lohani’s involvement. The burden to prove these objections fell on the Defendants, who failed to provide substantial evidence beyond denials.

The Plaintiff’s evidence establishes Ms. Jo Luck’s authority, confirmed during cross-examination, and Mr. Mahendra Lohani’s authorization under Plaintiff’s directive. Despite the Defendants’ objections, there is no legal prohibition against an advocate serving as an attorney for lawsuit initiation. The Power of Attorney clearly authorizes Mr. Srivastava as a constituted attorney, distinct from the Plaintiff’s legal counsel, M/s King Stubb & Kasiva.

Therefore, the Plaintiff adequately demonstrated the suit’s validity, signed, verified, and instituted by a competent person. The court resolves this issue in favor of the Plaintiff and against the Defendant Trust.

Issue No. 3: Infringement of Plaintiff’s Trademark by Defendant Trust

The central concern of this issue is whether Defendant Trust has violated the Plaintiff’s trademark, trade name, and corporate identity, “HEIFER.” The Plaintiff has substantiated its ownership of registered trademarks through certificates of registration and witness testimony, establishing its exclusive rights over the “HEIFER” marks in India. Defendant No. 2’s admission during cross-examination further confirms the Plaintiff’s undisputed ownership and lack of challenge to its trademark rights.

Moreover, the objectives outlined in Defendant Trust’s Trust Deed indicate an understanding of permissive use of the “HEIFER” trademark and logo, implying a relationship between the Plaintiff and Defendant Trust. Despite attempts by Defendant No. 2 to distance himself from the origins of the Defendant Trust’s adoption of the marks, evidence suggests a historical association between the parties.

Defendant Trust’s reliance on an FCRA license does not negate this relationship, especially considering Defendant No. 2’s prior employment with the Plaintiff and the submission of financial reports to Plaintiff. Late Mr. Pran K. Bhatt’s admissions during deposition further weaken Defendant Trust’s position, revealing their lack of ownership over the “HEIFER” marks and their attempt to register the mark in their personal name.

The Defendants’ unauthorized use of Plaintiff’s marks, even after revocation of permission, constitutes infringement and undermines Plaintiff’s intellectual property rights. The Defendants’ actions not only deceive the public but also misrepresent their affiliation with the Plaintiff, causing confusion in the marketplace.

Issue No. 4: Relief of Permanent Injunction

The Plaintiff is entitled to a permanent injunction restraining Defendant Trust and its affiliates from infringing upon the Plaintiff’s trademarks, trade name, and corporate identity, including any similar names or marks.

Issue No. 5: Relief of Rendition of Accounts and Damages

The Plaintiff seeks compensatory and punitive damages along with rendition of accounts. However, under Section 135(1) of the Trademarks Act, one can either claim damages or an account of profits, not both. Since the Plaintiff failed to establish exceptional circumstances warranting rendition of accounts and did not provide empirical evidence of the Defendants’ profits, the court deems this as not a fit case for rendition of accounts. However, considering the deliberate and egregiously illegal conduct of the Defendant Trust, the Plaintiff is entitled to nominal damages and legal costs.

RELIEF:

The suit is decreed in favor of the Plaintiff against the Defendant Trust with the following terms:

  • A permanent injunction is decreed, restraining the Defendant Trust and its affiliates from infringing upon the Plaintiff’s trademarks, including the marks “HEIFER” and associated logos, or any deceptively similar trademarks.
  • A mandatory injunction is decreed, directing the Defendant Trust to:
    1. Hand over all materials bearing the Plaintiff’s trademarks.
    2. Recall and hand over all products, marketing, and promotional materials bearing the infringing marks.
    3. Deliver for destruction all materials bearing the Plaintiff’s marks in their possession or control.
  • The Defendant Trust is directed to pay nominal damages of Rs. 3,00,000/- to the Plaintiff.
  • The Plaintiff is entitled to actual legal costs recoverable from the Defendant Trust, to be filed by May 15, 2024, and subsequently computed by the Taxing Officer.
  • Additionally, a decree sheet is to be drawn up, and the case, along with pending applications, is disposed of.

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Judgement Reviewed by – Chiraag K A

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“Supreme Court Rules Out Easement by Necessity in Presence of Alternative Property Access”

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Case title: Manisha Mahendra Gala & Ors. V. Shalini Bhagwan Avatramani & Ors.

Case no.: Civil Appeal No. 9643 Of 2010

Dated on: 10th April 2024

Quorum: Justice Pankaj Mithal and Justice Prashant Kumar Mishra

FACTS OF THE CASE

In the legal realm, disputes often arise over property rights, particularly when it comes to access and usage of shared pathways or roads. The case of Manisha Mahendra Gala & Ors. vs. Shalini Bhagwan Avatramani & Ors., hereafter referred to as the Gala case, delves into the intricacies of easementary rights over a 20ft. wide road situated on land owned by the respondents, the Ramani family. The Supreme Court of India, through its judgment dated April 10, 2024, provided a detailed analysis of the facts, submissions, issues, and the ultimate legal decision.

The dispute revolves around a 20ft. wide road located on Survey No.57 Hissa No.13A/1, presently owned by the Ramani family. The appellants, Gala family, claimed easementary rights over this road for access to their property, Survey No. 48 Hissa No.15. The Gala family argued that they had been using the road for many years and that their access to their land depended solely on this pathway. The case stemmed from two separate suits: Suit No.14 of 1994 filed by Joki Woler Ruzer (later succeeded by Mahendra Gala and then the Gala family) for declaration of easementary rights, and Suit No.7 of 1996 filed by the Ramani family to declare the Gala family’s lack of rights over the road.

CONTENTIONS OF THE APPELLANT

The appellants, represented by senior counsel Shri Huzefa Ahmadi, contended that the Gala family’s usage of the road for many years granted them easementary rights. They also argued that the Sale Deed dated 17.09.1994, transferring land to Mahendra Gala, acknowledged their right of way over the road.

CONTENTIONS OF THE RESPONDENTS

On the other hand, the respondents, represented by counsel Shri Devansh Anoop Mohta, disputed the Gala family’s claims, asserting that they had no legal right to the road.

ISSUE –

  • Whether the appellants have acquired easementary rights over the disputed road.
  • Whether the findings of the lower courts were valid and justifiable.
  • Whether the Sale Deed dated 17.09.1994 conferred easementary rights.

COURT’S ANALYSIS AND JUDGEMENT

The Court analyzed the evidence presented and legal precedents. It concluded that the appellants failed to establish uninterrupted use of the road for over 20 years, a requirement for acquiring easementary rights by prescription. The Sale Deed did not confer such rights, as the appellants’ predecessors did not possess them. Additionally, the Court rejected the argument of easementary rights by necessity, as there was an alternative access route available. It upheld the decisions of the lower courts, dismissing the appellants’ appeals.

The Supreme Court dismissed the appeals, ruling that the appellants had not acquired easementary rights over the disputed road. The judgement reaffirmed the principle that factual findings of lower courts can be reviewed by appellate courts, and highlighted the importance of clear evidence in establishing legal rights.

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Judgement Reviewed by – Chiraag K A

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“Decision of Arbitral Tribunal to not Implead a Party to Arbitration is not an Interim Award”: Delhi High Court

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Case title: National Highway Authority of India v. Ms IRB Ahmedabad Vadodra Super Express Tollways Pvt. Ltd

Case no.: O.M.P. (COMM) 455/2022 & I.A. 18565/2022

Order on: 2nd April 2024

Quorum: Justice Prateek Jalan

FACTS OF THE CASE

The petitioner, National Highway Authority of India (NHAI), challenged a decision of a three-member Arbitral Tribunal dated 01.08.2022. This decision rejected NHAI’s application under Order I Rule 10 of the Code of Civil Procedure, 1908 (CPC) for impleadment of the State of Gujarat as a party to the arbitral proceedings. The arbitral proceedings stemmed from a Concession Agreement dated 25.07.2011 between NHAI and the respondent, MS IRB Ahmedabad Vadodra Super Express Tollways Pvt. Ltd.

CONTENTIONS OF THE APPELLANT

Advocates Mr. Ankur Mittal, Mr. Abhay Gupta, and Mr. Ankur Saboo represented NHAI. They argued that the State of Gujarat should be impleaded based on the obligations it undertook in a State Support Agreement dated 11.02.2016, which was related to the Concession Agreement.

CONTENTIONS OF THE RESPONDENTS

Represented by Mr. Atul Nanda, Senior Advocate, the respondent contested NHAI’s application for impleadment, arguing that the Arbitral Tribunal lacked jurisdiction to decide on the impleadment of the State of Gujarat.

Mr. Nanda submits that the question of maintainability of a petition under Section 34 of the Act against an order of an arbitral tribunal declining impleadment of a third party is no longer res integra. He relies upon the decision in National Highway Authority of India vs. Lucknow Sitapur Expressway Ltd. (Lucknow Sitapur Expressway), The Court was, in that case, also concerned with a decision of an arbitral tribunal adjudicating disputes under a Concession Agreement. The Tribunal had rejected an application by NHAI for impleadment of a State Government on the ground that it was a party to a State Support Agreement.

LEGAL PROVISIONS

Section 34 of the Arbitration and Conciliation Act, 1996 – Application for setting aside arbitral award.

It allows parties to challenge an arbitral award before the appropriate court on certain grounds, including that the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties. In this case, the petitioner NHAI, invoked Section 34 to challenge the decision of the Arbitral Tribunal rejecting its application for impleadment of the State of Gujarat.

ISSUE –

The main issue was whether the decision of the Arbitral Tribunal rejecting NHAI’s application for impleadment of the State of Gujarat constituted an arbitral award, thus making it amenable to challenge under Section 34 of the Arbitration and Conciliation Act, 1996.

COURT’S ANALYSIS AND JUDGEMENT

The court examined precedents, including the case of Lucknow Sitapur Expressway Ltd., which involved similar circumstances. In Lucknow Sitapur Expressway, it was ruled that a decision rejecting an application for impleadment did not constitute an arbitral award under Section 2(1)(c) of the Act. The court emphasized that for a decision to be considered an award, it must decide a substantive dispute or conclusively settle an issue pertaining to the heart of the dispute.

The court further clarified that the distinction between a decision on jurisdiction and one on merits did not affect the characterization of the decision as an award. Even if the tribunal ruled on the jurisdiction to decide on impleadment, it did not change the nature of the decision. The court referenced various legal principles and previous judgments to support its conclusion.

In light of the precedent set by Lucknow Sitapur Expressway and other relevant judgments, the court held that NHAI’s petition under Section 34 of the Act was not maintainable. Consequently, the petition was dismissed, and all pending applications were disposed of.

The court’s decision in the case of O.M.P. (COMM) 455/2022 reaffirmed the legal position established by precedent, particularly the Lucknow Sitapur Expressway case. It clarified the criteria for a decision to be considered an arbitral award and emphasized that decisions on procedural matters like impleadment did not fall under this category.

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Judgement Reviewed by – Chiraag K A

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“Merits of Case not necessary for Granting Delay in Condonation,” Principles For Condonation Of Delay Under Limitation Act laid down by Supreme Court.

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Case title: Pathapati Subba Reddy (Died) By L.Rs. & Ors. v. The Special Deputy Collector (LA)

Case no.: Special Leave Petition (Civil) No. 31248 Of 2018

Order on: 8th April 2024

Quorum: Justice Pankaj Mithal and Justice Bela M. Trivedi

FACTS OF THE CASE

In the village of Gandluru, District Guntur, Andhra Pradesh, certain lands were acquired for the Telugu Ganga Project in 1989. Dissatisfied with the compensation offered, 16 claimants filed a reference under Section 18 of the Land Acquisition Act. During the pendency of the reference, three of the claimants passed away, but their heirs were not substituted. Eventually, the reference was dismissed along with others, upholding the collector’s award.

Several years later, some heirs and legal representatives of one of the deceased claimants, Pathapati Subba Reddy, sought to file an appeal challenging the dismissal. However, they did so after an inordinate delay of 5659 days. They cited reasons such as lack of awareness of the reference due to living away from the ancestral home.

CONTENTIONS OF THE APPELLANT

The appellants, heirs of the deceased claimant No. 11, sought to explain the delay by citing lack of awareness of the reference due to living in a different household. They argued that they promptly filed the appeal upon discovering the reference.

CONTENTIONS OF THE RESPONDENTS

The respondent argued against condoning the delay, highlighting the lack of due diligence by the claimants in pursuing the reference earlier. They also emphasized that most claimants had accepted the reference court’s decision, implying acquiescence to the dismissal. Few Judgements which were relied on:

  • Bhag Mal alias Ram Bux and Ors. vs. Munshi (Dead) by LRs. and Ors. [1]:

it has been observed that different provisions of Limitation Act may require different construction, as for example, the court exercises its power in a given case liberally in condoning the delay in filing the appeal under Section 5 of the Limitation Act, however, the same may not be true while construing Section 3 of the Limitation Act. It, therefore, follows that though liberal interpretation has to be given in construing Section 5 of the Limitation Act but not in applying Section 3 of the Limitation Act, which has to be construed strictly.

  • Lanka Venkateswarlu vs. State of Andhra Pradesh & Ors.[2]:

where the High Court, despite unsatisfactory explanation for the delay of 3703 days, had allowed the applications for condonation of delay, this Court held that the High Court failed to exercise its discretion in a reasonable and objective manner. High Court should have exercised the discretion in a systematic and an informed manner. The liberal approach in considering sufficiency of cause for delay should not be allowed to override substantial law of limitation. The Court observed that the concepts such as ‘liberal approach’, ‘justice-oriented approach’ and ‘substantial justice’ cannot be employed to jettison the substantial law of limitation.

  • Imrat Lal & Ors. vs. Land Acquisition Collector & Ors.[3]:

In this case also the matter was regarding determination of compensation for the acquired land and there was a delay of 1110 days in filing the appeal for enhancement of compensation. Despite findings that no sufficient cause was shown in the application for condoning the delay, this Court condoned the delay in filing the appeal as a large number of similarly situate persons have been granted relief by this Court.

LEGAL PROVISIONS

Section 3 of the Limitation Act, in no uncertain terms lays down that no suit, appeal or application instituted, preferred or made after the period prescribed shall be entertained rather dismissed even though limitation has not been set up as a defence subject to the exceptions contained in Sections 4 to 24 (inclusive) of the Limitation Act.

Section 5 of the Limitation Act, Extension of prescribed period in certain cases. – Any appeal or any application, other than an application under any of the provisions of Order XXI of the Code of Civil Procedure, 1908 (5 of 1908), may be admitted after the prescribed period if the appellant or the applicant satisfies the court that he had sufficient cause for not preferring the appeal or making the application within such period.

ISSUE – The key issue was whether the High Court was justified in refusing to condone the inordinate delay in filing the appeal.

COURT’S ANALYSIS AND JUDGEMENT

The Court analysed the principles underlying the law of limitation, emphasizing the need for finality in litigation and the mandatory nature of Section 3. It discussed the discretionary power of courts to condone delay under Section 5, contingent upon the demonstration of “sufficient cause” by the appellant.

The Court cited precedents to underscore the necessity of exercising caution in condoning delays, particularly when negligence or lack of due diligence is apparent. It emphasized that while the court may adopt a liberal approach, it should not disregard the statutory provisions or the need for substantial cause for delay.

Ultimately, the Court upheld the decision of the High Court, reasoning that the claimants had failed to demonstrate sufficient cause for the delay. It highlighted their lack of diligence in pursuing the reference earlier and noted that most claimants had accepted the reference court’s decision. Consequently, the Special Leave Petition was dismissed.

The case underscores the importance of diligence and awareness in pursuing legal remedies and the stringent application of limitation laws. It reaffirms that while courts may exercise discretion in condoning delays, such discretion is not absolute and must be exercised judiciously.

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Judgement Reviewed by – Chiraag K A

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[1] (2007) 11 SCC 285

[2] (2011) 4 SCC 363

[3] (2014) 14 SCC 133