'Classic Case Of Triple Identity': Delhi HC Issues Permanent Injunction In Favor Of Heifer International In Infringment Suit Against Heifer Project India Trust

The Delhi High Court has issued a permanent injunction in favor of Heifer Project International in a trademark infringement dispute against Heifer Project India Trust.

Justice Sanjeev Narula, presiding over the case, highlighted that it was a clear instance of 'triple identity'.

Justice Narula noted, "Indeed, the present case is a classic instance of 'triple identity.' The Impugned trademarks are nearly identical, as are the areas of operation, and the segments of the public they target. Therefore, the Defendants' use of these nearly identical and deceptively similar marks is certain to cause deception and confusion among the general public."

"Defendants have engaged in the infringement of Plaintiff's trademark, trade name, and corporate identity, “HEIFER.” This infringement contravenes Plaintiff's established legal rights governing trademark usage rights, particularly in cases where prior authorization has been explicitly withdrawn.1 Defendants' continued utilization of the “HEIFER” mark, post-revocation, constitutes a clear violation of Plaintiff's intellectual property rights, affirming the untenability of their defence," he added.

Heifer Project International, the plaintiff, had instituted by Heifer Project International (plaintiff), seeking 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 Plaintiff adopted a unique and uncommon word “Heifer” in the year 1953 as its corporate name and identity for its activities and continued to use the same continuously and uninterruptedly, as or in connection with, its trade names, corporate name, and trademarks.

Subsequently, the Plaintiff coined and adopted two trademarks namely “Heifer International” and “Heifer Project” in relation to its activities. Furthermore, they adopted a device mark of a leaping cow which was placed in the left-hand top corner of the “Heifer International” trademark and a pictorial mark having the shapes of several animals namely a cow, a goat etc. in an oval device which was also used jointly with “Heifer International”.

At the time initiation of this lawsuit, all five of these marks were registered with the United States Patent & Trademark Office (US PTO), affirming Plaintiff's legal claim to their use. However, the Court noted that three of the five registrations now stand cancelled.

It was stated that the copyright for these artistic creations is held by Plaintiff, extending globally and also within India. To further strengthen its trademark portfolio, Plaintiff stated that they had also successfully registered four 'Heifer' trademarks with the Indian Trademark Office, ensuring comprehensive protection of its intellectual property. The said marks were granted registration during the pendency of the present suit.

The Defendant No. 1, (“Defendant Trust”), a non-profit charitable trust, was formed on 24.12.1992, with its headquarters located in New Delhi, and operates under the name 'Heifer Project - India Trust,' but is more widely recognized as 'Heifer Project India.'

It was stated that in 1997, the Late Mr. Pran Bhatt, Defendant No. 2, became associated with the Defendant Trust, assuming the role of 'Country director- India' and was simultaneously appointed as the 'Managing Trustee'. Prior to this engagement, Defendant No. 2 was employed by the Plaintiff, with their professional relationship governed by a series of contracts periodically executed and renewed by Plaintiff. However, the contractual relationship between the Plaintiff and Defendant No. 2 ceased on 30.06.2003, when Plaintiff opted not to renew their contract.

It was the Plaintiff's case that it granted Defendant Trust permission to utilize the “Heifer” and “Heifer Project” names and associated logo, even prior to the formation of the Defendant Trust.

This authorization was contingent upon a broad agreement that Defendant Trust could employ these trademarks and logo if they operated in a manner that was harmonious and cooperative with Plaintiff's mission and facilitated Plaintiff's activities within India. This cooperative arrangement included Plaintiff's commitment to funding specific projects in India through Defendant Trust. In return, Defendant Trust was obligated to regularly report on the progress and financial details of the projects financed by the Plaintiff.

It was contended by plaintiff that in 2002, Defendant No. 2 began to deviate from his contractual obligations under his employment agreement, showing a marked reluctance to adhere to Plaintiff's basic requirements for reporting and accountability. Despite numerous discussions addressing these concerns and Defendant No. 2's assurances to rectify the issues, he ultimately failed to fulfill his responsibilities.

As a consequence, it was stated that his contract to serve as the Country Director for India was not extended beyond 30th June, 2003. Nevertheless, Defendant No. 2 maintained his role as Managing Trustee of Defendant Trust, during which he directed the trust's operations in a manner that was allegedly 'both whimsical and arbitrary'.

The plaintiff argued that on October 9, 2003, the Defendant sent a letter to Defendant 1, informing them of the suspension of all project funding in India. Explicit instructions were given to Defendant 1 to discontinue the use of the 'Heifer Project' trademark, trade name, and logo. Additionally, the Defendants were directed to return all materials, cash, and other properties belonging to the plaintiff. Despite these clear instructions, the defendants continued to utilize the plaintiff's marks.

As a result, the plaintiff asserted that the defendants were infringing on their registered trademarks and unlawfully benefiting from the extensive goodwill and reputation cultivated since 1953. Furthermore, the defendants had no legitimate right to utilize or seek registration for the disputed marks or engage in any business activities under them.

The Court further stated that in regards to the defendants' reliance on their FCRA license as proof of their autonomy, there was ample evidence demonstrating the establishment of a relationship with the plaintiff from the outset of Defendant 1's operations, which endured over a considerable period.

Consequently, the Court opined that even if it were acknowledged that Defendant 1 functioned as an independent legal entity, this did not diminish the existence of a relationship between the plaintiff and Defendant 1. This relationship, according to the Court, could be characterized as that of a licensor and licensee, particularly concerning the lawful utilization of the plaintiff's trademarks.

“Defendants have further compounded their infringement by falsely representing their relationship with Plaintiff. They have insinuated to the public and stakeholders that they remain affiliated or integrally connected with Plaintiff, thereby undermining Plaintiff's brand/ trademark integrity and causing confusion about its unique identity in the marketplace. Defendants lack any legal right or justification to the use of contested marks, or applying for their registration of identical marks for conducting any business activities,” the Court added.

The Court has accordingly directed Defendant 1, or anyone acting on their behalf, to surrender to the plaintiff all goods, visiting cards, letterheads, packaging and promotional materials, catalogs, stationery, and any other materials bearing the impugned trademarks or any other deceptively similar trademark.

Furthermore, Defendant 1 was ordered to recall all products, marketing, promotional, and advertising materials featuring the impugned marks or any other deceptively similar trademark.

Additionally, the Court has instructed Defendant 1 to facilitate the representatives appointed by the plaintiff in the destruction of all products, labels, signs, prints, packages, moulds, visiting cards, letterheads, and advertisements under its possession or control bearing the plaintiff's marks.

Further, the Court has also awarded the plaintiff nominal damages of Rs. 3,00,000 and has mandated Defendant 1 to pay this sum.

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

Citation: 2024 LiveLaw (Del) 503

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