BLINKHIT And MISSED: Blinkhit Private Limited vs. Blink Commerce Private Limited (Blinkit)

Brief Background

The Addl. City Civil Judge, Bangalore vide its order dated August 10, 2022 passed an order in favour of the Appellant i.e. Blinkhit Private Limited inter alia granting temporary injunction restraining the Respondent i.e. Blink Commerce Private Limited from infringing their registered trademark either by the way of Respondent’s use of the name/mark BLINKIT or any other variations thereof.

The said order was solely based on the Appellant’s contentions of having procured prior registration of the mark and to have cumulated vast reputation and goodwill in the market since its inception in 2016. Additionally, the Respondent’s (which was originally known as Grofers India private Limited) subsequent and fairly recent adoption of the deceptively and confusingly similar name/mark BLINKIT/ in 2021 has made the Appellant incur severe losses. The Appellant also went ahead and alluded the Respondent to have calculatedly and dishonestly adopted a similar mark only with the motive to ride upon the goodwill enjoyed by the Plaintiff, given its well repute all over the country.

Displeased with the trial court’s order, Blink Commerce Private limited proceeded to file an appeal in the Karnataka High Court on the ground of the trail court’s order to be erroneous, arbitrary and contrary to the well settled principles of law governing passing of an order of injunction in relation to trademarks.

Contentions of Blink Commerce Private Limited

• Registration of a trademark does not provide free pass to squat over the same without actually using the mark for the purpose of carrying out business.
• Not only is the nature of business of the entity different for which registration has been obtained, no actual business has been carried out since its registration, thus giving no rise to any cause of action.
• Trademark registration has been obtained for the device mark which incorporates multiple elements and thereby does not attribute specific rights to the name/mark BLINKHIT alone.
• The name/mark is visually, structurally, conceptually, and phonetically different from the mark or the alleged mark BLINKHIT, thereby leaving no room for any deception and confusion.
• Blinkhit Private Limited has made out a case of temporary injunction solely on the basis of mere similarities which is not sufficient to infer either infringement or passing off.

Comparison of Rights

Despite Blinkhit Private Limited having obtained prior registration for the mark, online presence in terms of social media and application use/downloads portrays a very different view point. Blinkhit Private Limited’s lack of proper business operations since its inception is further substantiated by its non-operational website as well as nominal downloads of its application resulting in little to no activity of the same.

When compared to Blink Commerce’s reach and the quantum of engagement in terms of social media as well as application downloads, Blinkhit stands no ground to claim Blink Commerce Private Limited having adopted a similar mark to ride upon the goodwill or well set reputation, when they appear to possess none.

Karnataka High Court’s Order

• The court was of the opinion that merely obtaining registration of a trademark i.e. the device mark comprising of the word BLINKHIT as a component by Blinkhit Private Limited can not be construed or treated as document of title.

The court also quoted a 2016 Apex Court judgment S.SyedMohideen vs P.Sulochana Bai wherein it was held “It is also a well settled principle of law in field of trade marks that the registration merely recognizes the rights which are already pre-existing in common law and does not create any rights’.

In addition to above, the court quoted the judgment passed by the Delhi High Court in Century Traders v. Roshal lal Duggar & Co. “Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. …. The trade mark exists independently of the registration which merely affords further protection”.

• Further the court emphasized that in case of conflict between registered proprietors, the evaluation of better rights is based on the principles of common law rights i.e. by way of use. Given that registration of rights was introduced later, registration is held as mere recognition of pre-existing rights in common law and rights under common law shall be held superior.

• The court also took note that the nature of business of Blinkhit Private limited is completely different to that of the Blink Commerce Private Limited. Having obtained registration in the same class but carrying completely difference business does not make a prima facie café of temporary injunction.
• Lack of any financial activity and income as reflecting on the balance sheet /profit and loss account statement of Blinkhit Private Limited is sufficient to establish that no business activity was being conducted under the mark. Thereby, Blinkhit Private Limited not only abandoned the same but also disentitled itself to an order of temporary injunction.
• The court concluded the balance of convenience to be in favour of Blink Commerce Private limited who would actually suffer irreparable injury and hardship if an order of temporary injunction is passed against them in comparison to Blinkhit Private limited who would be caused no prejudice, injury, loss or hardship if injunction is refused.

Analysis

The Karnataka High Court time and again emphasized over the existing rights one possesses under the common law and that registration is just a mere recognition of the pre-existing rights. By virtue of the same, despite Blink Commerce Private Limited not having statutory rights of the name/mark BLINKIT, its extensive and continuous use since 2021 was given precedence over a registered mark which has next to no use.

In view of the present case, the Supreme Court saw through the lack of financial activity and called out the Appellant’s zero turnover. The court simply disregarded the trademark registration obtained by the Appellant and its non-use since inception i.e. since 2016 was given precedence compared to the expansive and continuous use of the Respondent.

Non-use of the mark by the Blinkhit Private Limited also turned out to be detrimental when it came to adjudicating the balance of convenience. Given the next to no use of the Appellant, no loss, injury or harm was to be suffered if temporary injunction was not granted. Whereas, the said temporary injunction would have led to an immense loss to Blink Commerce Private Limited, given the mobile application under the mark is used widely by more than 1 crore users in India.

However, one should always conduct due diligence at their end and peruse through the registry’s record for possible hindrances prior to taking such an important decision of re-branding their business. Prior registrations will always come around to create impediments. It was the non-use of the registered trademark which led to the shift of balance of convenience.

Therefore, obtaining registration of the mark just bestows upon the right to seek remedy, however non-use post registrations shall leave your rights unprotected. The rights so obtained by registration is not a one stop solution for overall protection. One has to understand the holistic nature of brand protection where registration and enforcement actions go hand in hand with promoting and propagating the business under the said brand you seek to protect.

Authors: Arpit Kalra, Associate Partner and Sulagna Goswami, Associate Advocate at S.S. Rana & Co. Views are personal.