Delhi High Court raises the threshold for trademark dilution suits

In a surprising, yet welcome, judgment, Justice Ravinder Bhat of the Delhi High Court has rejected a suit for trademark infringement, without a trial, on the ground that it fails to disclose an adequate cause of action, despite the fact that both trademarks involved were the same i.e. ‘Kamadhenu’, albeit for different goods. The Order can be accessed here.

The word ‘Kamadhenu’, a word derived from Sanskrit is used to describe the ‘mother of all cows’ in Hindu mythology. The Plaintiffs in this case, Kamdhenu Ispat Ltd. had registered the mark ‘KAMADHENU’ in seven classes related to steel and other diverse classes related to chemical and industry, cement and construction, paints and varnishes etc. The main business of the Plaintiffs was related to manufacture and market of steel bars and other cognate products. The Defendants on the other hand were using the mark ‘Kamadhenu’ as a trading name for its ‘pickles’ business. The defendants were able to produce documents establishing that they were using the disputed name far before the Plaintiffs even started their business.

The Plaintiffs sought to sue for dilution and trademark infringement on the grounds that they have a trademark registration for ‘Kamdhenu’ despite the fact that there was absolutely no similarity between their products with those of the defendants. Falling back on first principles Justice Bhat stated “Trademark law, does not imply formalistic or ritualistic application of abstract principles; its existence and rationale is to protect businesses built up to match certain standards. If a trader or manufacturer uses words that acquire some distinctiveness, he is undoubtedly entitled to protection, at least in respect of similar marks, in respect of the goods he deals in. However, merely because he acquires registration (of the mark) he does not become its exclusive owner.”

Justice Bhat further held that the standard of proof to establish reputation for the purposes of dilution was rather high and would require the plaintiff to conclusively establish that the reputation transcended the main business of the plaintiffs. In this case the plaintiff had at best managed to establish its reputation with respect to steel bars and not to any other class of goods. Moreover there was absolutely no possible manner in which a steel buyer would get confused by the use of the mark on a jar of pickle.

On the basis of the above arguments Justice Bhat dismissed the suits stating that “the plaintiff has not been able establish the case for either infringement by dilution or of the corporate name, by the defendant; the suit itself does not disclose any cause of action, for any of the reliefs claimed. The suit and pending applications are therefore rejected; in the circumstances, there shall be no order on costs.”

If it were any other judge the matter would have probably been sent for trial and decided after 5 years and a lot of costs. Justice Bhat, however is probably one of the rare judges who has the courage and foresight to throw out frivolous litigation when he sees it.