24 March 2014

Trademarks – Protection of well-known trademarks used in dissimilar services

The Delhi High Court has granted interim injunction in case of use of mark ‘BRAHMOS’ in relation to educational services. Relying on two precedents of the court, namely Bloomberg Finance LP v. Prafull Saklecha [2013 (56) PTC 243 (Del)] and Rolex Sa v. Alex Jewellery Pvt. Ltd. [2009(41) PTC 284 (Del)], it was held that if the registered trademark is a well-known trademark within  the definition of Section 2(1)(zg) of “well-known trademark”, same can be protected even in relation to dissimilar goods/services by the defendant. Here, it was noted that the plaintiff is also providing educational training and programmes. The mark was found to be well-known and hence coming within the definitions under Sections 2(1)(m) and 2(1)(zg) of the Trademarks Act, as it was  associated with the substantial segment of public,  used for supersonic missile in the aerospace industry; protected by the court in connected matters; used prior to the use by defendants; has acquired great goodwill and reputation in India and abroad; was widely advertised.

Argument that the mark was not used as trademark was also rejected by the court noticing advertisement of the mark by the defendants in a prominent manner under the other umbrella mark. Absence of valid justification as to how the mark, which was not a dictionary word (admittedly coined from names of two prominent rivers of India and Russia), hit upon the defendants was also noted by the court in this regard.

Contention of the defendants that the mark BRAHMOS is not a distinctive trademark and is used in relation to different services/goods, hence there was no question of confusion and deception, was rejected by the court while also rejecting the plea that that plaintiff in the field of education is using the name BRAHMAND and not BRAHMOS as per the evidence. In this regard, noting that it was possible that plaintiff has also obtained domain name www.brahmand.com, it was observed that it is also not deniable that the domain name www.brahmos.com belonged to them. The court noted that it is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement.


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