Delhi High Court Injuncts A Party Indulged In Trafficking/Hoarding Of Trademarks, Imposes Cost Of 10 Lakhs

The Single Bench of Justice Pratibha M. Singh held that it cannot turn a blind-eye to large scale illegality committed by the defendant who had admittedly filed 416 trademark applications and was not doing any genuine business under any of these marks.

The Case Of The Plaintiff

The plaintiff filed a suit for a permanent injunction restraining the defendants from using the mark OSRAM.

The plaintiff claimed that it had adopted the mark 'OSRAM' in 1906 and the same was registered in the year 1946 under trademark no. 1112537 in Class 11 and the mark is still on the register in its name.

The plaintiff further claimed that it has several trademark registrations for the mark OSRAM both domestically as well as internationally under various classes. It further contended that the mark is an invented mark and its worldwide turnover in the year 2019 was 3,464 million Euros.

The plaintiff opposed the applications of the defendant for registration of trademark OSRAM under classes 1 and 3 wherein the defendants filed the counter statement and claimed that they were using the mark OSRAM.

The plaintiff also alleged that the defendant is a habitual trademark offender of well-known marks including Marks & Spencer, Fitbit, WhatsApp, iPhone, Micromax, Apple, etc.

Accordingly, the Court passed an ad interim injunction and directed the defendants to place on record a list of all the trademarks they have applied for.

Pursuant thereto, the defendants filed their statement and conceded to have filed a number of trademark applications for the purpose of selling trademarks and making money out of them.

The Decision Of The Court

The Court held it that cannot turn a blind-eye to large scale illegality committed by the defendant who had admittedly filed 416 trademark applications and was not doing any genuine business under any of these marks.

The Court injuncted the defendants from using the mark 'OSRAM' on the ground that they indulged in the trafficking/hoarding of the trademarks. The Court directed the defendants to withdraw their trademark applications and to pay a sum of rupees 10 lakhs as a part of litigation cost.

The Court further directed the Registrar of Trademarks to allow all the withdrawal applications filed by the defendants by 30^th June, 2022.

Case Title: OSRAM GMBH v. TEJMEET SINGH SETHI AND ANR. CS(COMM) 84 of 2022

Citation: 2022 LiveLaw (Del) 609

Date: 03.06.2022

Counsel for the Plaintiff: Ms. Dahlia Sen Oberoi & Ms. Manya Kumar, Advocates

Counsel for the Defendants: Mr. Niloy Dasgupta and Mr. Hemant Daswani, Advocates

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