Mere Fact That Both Prior & Subsequent User Are Registered Trademark Proprietors Irrelevant For Examining Who Generated Goodwill First: Delhi HC

The Delhi High Court has reiterated that the mere fact that both the prior user and the subsequent user are registered proprietors is irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill of the former user.

Justice Navin Chawla added that the action for passing off is premised on the right of the prior user generating goodwill and shall remain unaffected by any registration provided under the Trademarks Act.

"The register maintained by the Trade Mark Registry does not provide its user by the persons in whose name the mark was registered. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to the user of the mark from its mere presence in the register of the Trade Mark," the Court further reiterated.

The Court was dealing with a plea filed by one Anugya Gupta seeking directions to restrain defendants from using the marks "SARKARI RESULT", "SARKARIRESULT.INFO", "SARKARIRESULT.COM" in respect of domain name, websites, mobile applications, social networking platforms etc which may amount to passing off her information services relating to job and career opportunities.

It was the case of the plaintiff that in 2012, she had adopted the trade mark "SARKARIRESULT‟ and registered the domain name "SARKARIRESULT.COM", as the first step to give expression to her business idea of providing information services to students, teachers, parents, job seekers and the public at large.

The plaintiff asserted further that she launched the website "SARKARIRESULT.COM" in June 2012 for public access. It also provided the contact e-mail of the plaintiff as "SARKARIRESULT@GMAIL.COM" on the website so that the interested persons could contact and avail further information in respect of the job and career opportunities from her.

The plaintiff further asserted that she had adopted the device or logo in 2014 and that she also reached out to the public through social networking platforms like Facebook, Twitter and Instagram.

It was thus alleged that the defendants not only obtained the domain name of the said websites in May 2015 but also applied for the registration of the mark "SARKARIRESULT" with the Registrar of Trade Mark.

The Court was of the prima facie view that the plaintiff had been able to make out goodwill and reputation in the mark "SARKARIRESULT.COM" and that the documents filed by the defendants in support of their user of the mark "SARKARIRESULT" or "SARKARIRESULTS", prima facie, did not inspire much confidence.

"It is equally well settled that a prior user of the mark can seek an order of injunction even against a registered owner of the mark. The rights of the prior user are recognised as superior to that of the registration, and even the registered proprietor cannot disturb/interfere with the rights of the prior user," the Court said.

The Court prima facie opined that the adoption of the domain name by the defendants was dishonest.

"The subsequent user of a mark dishonestly adopted is equally tainted and totally immaterial. The party who has stolen the mark cannot claim the benefit of a concurrent user because the governing principle of concurrent user lies on account of honesty," the Court added.

The Court thus restrained the defendants from using the domain names "SARKARIRESULT.INFO" or "SARKARIRESULTS.INFO", or any other mark deceptively similar or identical to the plaintiff‟s domain name, during the pendency of the Suit.

Case Title: MRS. ANUGYA GUPTA v. MR. AJAY KUMAR & ANR.

Citation: 2022 LiveLaw (Del) 630

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