We’re pleased to bring to you a guest post by Eashan Ghosh on the recent Delhi High Court ruling in Suzuki Motor v. Suzuki India. Eashan has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He has written guest posts for us in the past as well (see here here, here, here, here, here, here and here).
The Timken Template: The Delhi High Court Ruling in Suzuki Motor v. Suzuki India
Earlier last week, the Delhi High Court made available its July 17 judgment issuing a trade mark infringement decree for the Claimant in Suzuki Motor v. Suzuki India.
It is an unexceptional finding against the Defendant that turns on three clear facts. First, the Defendant’s adoption of the trade mark ‘SUZUKI’ (for financial services) occurred at a time when the Claimant’s trade mark (for motor vehicles) was already well-known in India. Second, as a consequence, there was a later user burden on the Defendant – one which it fails here – to either adopt a different trade mark or establish honest concurrent use. Finally, the Defendant’s adoption of the trade mark is found to be mala fide, and the story offered in support of its adoption ruled “unbelievable”, “farfetched” and “unacceptable”.
The Timken Connection
These adjectives used by the Suzuki Court seem familiar – too familiar, as it turns out.
It emerges that paragraphs 50, 51, 56-59, 62-68, and 70 of the Suzuki ruling are spliced together, word for word, from various parts of the same judge’s May 2013 ruling in The Timken Company v. Timken Services. (A copy of the judgment identifying the portions taken from the Timken template is accessible here; the portions that do appear are almost entirely uncredited to their source.)
This is, of course, far from the only recent instance of template judgments by judges of this High Court. The compulsion to go down this route – inevitably an outcome of growing workloads under severely limited judicial time – can certainly be sympathized with to a degree. This is especially so in ex parte cases, where the premium on reciting accurate affirmative material in support of the final decision is high and the value gained from deviating from a template is negligible.
However, in a case where there is non-zero contest from the Defendant to a trade mark infringement claim, this approach, no matter what the quality of the template, can raise concerns.
One issue from the Suzuki ruling suffices to illustrate the point.
The Delay Defence in Suzuki
This issue rests on the Defendant’s principal defence, which is one of delay. The Defendant professes to have been in business in a different category of services to the Claimant continuously for a number of years. It asks the Claimant to answer a delay of “over 25 years” in bringing this action. (The Defendant claims continuous use since 1982, and this is not a point traversed by the Claimant’s recorded submissions.)
Borrowing from the Timken template, the Suzuki Court offers three renditions of the role of delay in assessing the merits of a trade mark infringement claim.
First, if the Defendant’s conduct in infringing a trade mark is fraudulent, it is per se barred from accessing the defences of delay, laches or acquiescence. Second, even “inordinate delay” does not defeat the grant of a temporary injunction if the Defendant’s use of the trade mark is fraudulent. Third, “mere delay” cannot defeat an action if the Defendant’s adoption of the trade mark is with a dishonest intention, and in the case of a continuing tort, every breach creates a fresh cause of action.
To be clear, these three renditions can be justified on their own terms. Even so, they certainly travel in different directions to some degree.
The first rendition, for instance, prescribes an absolute condition where Defendant fraud overrides any delay. The length of the delay is therefore immaterial.
The second rendition squares up the length of the delay with the remedies available to a Claimant. It rewards even a lengthy delay with a temporary injunction in the event of Defendant fraud. This runs in extension of the position that a lengthy or unexplained delay may influence post-trial remedies such as damages but ought not to deny the Claimant a temporary injunction.
The third rendition is the softest statement of the three. It simply offers that a delay, without anything further, should not cause the action as a whole to be thrown out if the Defendant has acted dishonestly.
However, here lies the difficulty: while all three renditions can be asserted in suitable circumstances, they cannot, by hypothesis, all apply to single set of facts. The Suzuki Court, despite (and perhaps because of) its Timken-inspired monologue, never actually commits to a clear position on which of these renditions applies to the facts of this case.
Instead, the Court summarily decrees the claim against the Defendant goes after it with the threat of criminal prosecution for making false claims in Court. This seems to mesh most directly with the first rendition, in which delay is irrelevant in the face of Defendant fraud.
However, if so, to what end is the four-paragraph discussion on categories of delay? If not, to what category of delay does this case belong? Is the staggering length of the delay at a point where, on balance, it must be set against the degree of dishonesty or fraud in the Defendant’s adoption of the trade mark? And how, ultimately, does a claim brought over 25 years after a Defendant has been in continuous (if fraudulent) business fall to be adjudicated?
This is a complex subject since the assessment, by its very construction, is rooted in equity. As such, judicial exertions are bound to invite responses from across the spectrum.
Indeed, the Delhi High Court alone has, over the years, when confronted with the delay defence, issued decisions exactly in line with Suzuki, authorizing concurrent use Defendants, vacating injunctions against Defendants for varying reasons, confirming injunctions against Defendants with directions to keep accounts and without, requiring both parties to maintain status quo, ruling on “mere delay” to permit injunctions, ruling on “long and inordinate delay” to deny injunctions, and even deferring the delay question until a full trial.
In view of this, the Suzuki Court’s eagerness to fit the facts before it into the Timken template is disappointing. It is more disappointing still when set against the fact that the delay defence is practically the only feature of interest in the Defendant’s case.
In sum, it is a classic bright side/downside scenario. The Suzuki decision shows that acceptable judicial outcomes do demonstrably lie within existing templates, yet it also exposes that the trade-offs inherent to adopting them mean that they will not always be ideal outcomes.