Delhi High Court refuses to give the interim nod to Noddy.

The Delhi High Court was recently called upon to decide what seems like a fairly straightforward case of trademark infringement and passing off, for an extremely well known mark “NODDY”- the same having been made famous by Enid Blyton’s popular books for children.(and being a personal favourite of this blogger as well). The factual matrix of the case very simply is as follows:

– The Plaintiffs are the global owners of the trademark rights for the mark NODDY. The said mark has been registered in India for several classes, the earliest being in 1997.

– The Defendants have been (through assignment etc.) in use of the mark NODDY along with the device of a boy’s head on the ‘Y’ for children’s apparel.

– Despite having sent a first notice to the Defendants in 2000 when the Trademark was first published in the journal for opposition, and thereafter filing a notice of opposition, the Plaintiffs did not pursue injunctive relief upon legal advice, after having heard that no business was being carried out under the said mark in the market.

– However, the “infringing” trademark of the Defendants was in fact registered in 2008. The Plaintiffs have thereafter followed all possible recourse to have the same rectified.

– Thereafter the Plaintiffs approached the Court in 2009 and filed a suit for trademark infringement and passing off.

But what is interesting about this case? Probably the fact that injunction was not granted.

The Judge first classified the judgment as relating to one being of Character Merchandising (for those interested- explained really simply, it basically relates to the use of a famous character as a brand for other goods- Barbie bags being one such example).

The Judge, despite being a self professed fan of the Noddy series, in refusing the interim injunction, made some extremely interesting observations.

1. Where no facts and figures have been supplied in the pleadings, documents or before Court to prove that the Plaintiffs are the prior users of the mark- the Courts cannot rely upon personal knowledge to hold in favour of the Plaintiff; the same amounting to “judicial notice”. The Learned Judge here holding that despite being well known to several sections of the public, if the prior use of the mark could not be proved by sales figures, import, etc. by the Plaintiffs, then a prima facie case would not lie for an interim injunction.

2. The oft followed approach of parties to “deny” averments in their pleadings should not be so ridiculous as to deny a fact well known to most people- in this case, being that Enid Blyton had written the Noddy books.

So practitioners, sit up and take note. This interim order reiterates the oft forgotten principle that even if globalisation has caused the Courts to take notice of well known marks of foreign companies/ entities, perhaps in practice it is still necessary to prove by way of documentation that a right accrues to the person seeking injunctive relief- bare averments to that effect having no weight before the Court.

For those who haven’t read the Noddy books, here’s a little intro. And for those who have children (or those young at heart), buy the books!.