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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”

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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