The High Court of Delhi, on February 24th, granted an interim injunction in favour of ‘Brahmos Aerospace Ltd’ restraining FIIT JEE, an institute that offers training for competitive exams from using the name ‘Brahmos’. The decision was granted in Brahmos Aerospace’s favour mainly on the ground that Brahmos is a “Well-Known Trademark” and can therefore be protected even in relation to dissimilar services, under S.29(4) of the Trademarks Act.
Brahmos Aerospace Pvt Ltd is a Government Company set up under the Ministry of Defence, with the majority shareholder being the Defence Research and Development Organisation (DRDO). Brahmos also conducts educational programmes pertaining to the aerospace industry, such as training of engineers and other employees. The defendants, FITJEE, advertised a course titled ‘Brahmos’ which was designed for students seeking admission in colleges in the United States of America. It was alleged by Brahmos that they had received several phone calls and emails from students who had confused their company with the course offered by FITJEE, and some had enquired whether taking the Brahmos Aptitude test conducted by the defendants would increase their chances of employment at the plaintiff company.
The Contentions of Brahmos Pvt. Ltd.
The plaintiffs contended that ‘Brahmos’ was a registered trademark under Classes 9, 35 and 41. They also contended that the word ‘Brahmos’ has been coined by them by combining the names of the rivers ‘Brahmaputra’ and ‘Moskva’, thereby acquiring distinctiveness. Further, they had obtained the domain name ‘www.brahmos.com’ which they used for educational purposes. They also contended that by virtue of being an extremely popular and well-publicised name, and a recipient of several awards, it is also a ‘well-known trademark’ within the meaning of S.29(4) of the Trademarks Act. Their case against the defendants is that the latter is encashing the tremendous goodwill associated with the mark Brahmos, by promoting an educational course with the same name.
The Contentions of FIITJEE
The defendant’s defence was threefold. First, it was argued that Brahmos is not a distinctive trademark. They used a Wikipedia entry for the same name to argue that Brahmos is merely a derivative of the term ‘Brahmin’. It was contended that since the plaintiff was primarily engaged in the aerospace industry, the protection of this non-distinctive name cannot be extended to a unrelated goods and services. The second line of argument was that the defendant’s usage of the word ‘Brahmos’ does not amount to infringement because the defendant’s main trademark is FIITJEE, and Brahmos is not being used by them in the form of a trade. The third contention was that while the plaintiff did carry out educational activities, such activities were specifically carried out under the name ‘Brahmand’ and Brahmos was only used by them with respect to its other activities.
The Decision of the Court
The Court held that FIITJEE’s usage of the term Brahmos does constitute trademark infringement (on a prima facie level), as the plaintiffs did have a registered trademark with the same name and did provide educational services. It then went on to consider whether even if they were to accept the defendant’s argument that the plaintiff did not use ‘Brahmos’ to refer to its educational services, this case would fall within S.29(4) of the Trademarks Act. The Court relied on two recent decisions of the Delhi High Court on ‘well-known trademarks’, namely, Bloomberg Finance v. Prafull Saklecha and Ors [2013 (56) PTC 243 (Del)] and Rolex Sa v. Alex Jewellery Pvt Ltd and Ors [(2009) 41 PTC 284 (Del)]. It was held that under S.29(4), as long as the mark is of distinctive nature and has a reputation in India, it can be protected even against usage of the word for dissimilar goods and services. The Court held that the fact that Brahmos is a well-known trademark is “an undisputed fact”. They further held that the defendant’s contention that their usage of the term is not infringement as it is used merely under the umbrella trademark FIITJEE is frivolous, as it is evident from the advertisements that the term Brahmos was used prominently and “deliberately in order to take advantage of the mark BRAHMOS of the plaintiff”.
With this, the Court found that all three elements for a temporary injunction under O.39, CPC, namely, prima facie case, irreparable injury and balance of convenience were in favour of the plaintiff. The defendants were thus retrained from using the trademark Brahmos in any manner whatsoever.
While the decision does not reveal how the Court came to the conclusion that Brahmos is a well-known trademark, what courts often look at is the extent and duration of usage of the trademark (Indian Shaving Products Ltd v. Gift Pack (1998) PTC 698), extent of promotion of the trademark through advertising (NR Dongre v. Whirlpool Corp (1996) PTC 16 583) and record of successful enforcement of the trademark in the past (Shaw, Wallace and Co v. Mohan Rocky Spring Water (MIPR (2007) 2 185), among other factors. It must be kept in mind that since this is an order for temporary injunction, the Court only had to look at whether there was a prima facie case. Since S.29(4) of the Trademark Act can virtually confer a monopoly over usage of words to trademark holders, the threshold to confer the status of a well-known trademark is quite high. We will have to wait and watch whether Brahmos is held to be ‘well-known’ when the case is heard on merits.