Proprietor of trademark to decide when infringement affects business: Delhi HC

The Delhi High Court recently delivered a judgment wherein it held that inaction regarding infringement in the past does not prevent the proprietor of trademark from taking protective action in the future..The judgment was delivered by a single judge bench of Justice Rajiv Sahai Endlaw in Sunil Mittal and Anr. vs. Darzi on Call .Brief Facts.The plaintiffs were the founders of the business concern “The Darzi” since 1981, which provided tailoring services. The defendants were also engaged in the same nature of services since 2015 and had adopted the trade name “Darzi on Call”. The plaintiffs, represented by Advocate DK Yadav, had sought for injunction restraining the defendants from using the word “Darzi”..Observations.Justice Endlaw was not convinced with the submissions of the defendant represented by Advocate J Sai Deepak that the word “Darzi” is generic in nature and several third parties have applied for registration of this word for tailoring services. He stated:.“The defendant has been unable to cite any person carrying on tailoring business describing his/ her/ its services as those of ‘DARZI’….Plaintiffs are admittedly the prior adopter of the word ‘DARZI’ as trade name / trade mark or as part of trade name / trade mark.”.Justice Endlaw also said that it is not expected of a proprietor of a trademark to, instead of carrying on business under the trademark, make litigation a business..“Merely because the plaintiffs have not felt the need to take action against some others, even if using the word ‘DARZI’ as a trade name, if according to the plaintiffs such use does not affect the business of the plaintiffs, the same cannot deprive the plaintiffs of protective action, when another invades his business..A person who for the first time starts using as a trade name / trade mark, a word which in the past has always been used as descriptive of the services, cannot, in my opinion, be denied the protection as available to other proprietors of trademark, on the ground of the word being descriptive of the trade.”.Regarding prohibition on the use of descriptive words as trademarks, Justice Endlaw stated,.“There may be multiple words listed in the Thesaurus / Dictionary to describe any goods or service. However all such words would not become unregistrable as a trade mark under Section 9(1)(b)….Also, the goodwill of a business as of tailoring is by word of mouth. A person for whom either the plaintiffs or the defendant have customised or tailored, when asked of the reference of his tailor is unlikely to mention the defendant as ‘DARZI ON CALL’ as distinct from plaintiffs as ‘THE DARZI’; even if he were to so mention, the person seeking reference is unlikely to remember the words “ON CALL” and what is likely to stick to his memory is the word ‘DARZI’….…What has to be applied is the test of human beings and not a test as laid down in the law books in relation to a different society.” .Justice Endlaw also elaborated on the need for protection of trademark especially to boost entrepreneurship. The judgment states,.“The message which this Court will be sending out if refuses injunction in a case as this is that it, embroiled in its legalese and technicalities of law as the defendant here has raised, is encouraging such deception in society and allowing hijacking of businesses which another has toiled to build. Such a message going out from the Court will kill entrepreneurship in the country, thereby spelling the doom for development.”.Specifically on the case in hand, Justice Endlaw pronounced,.“Today, customised / bespoke tailoring, which both, plaintiffs and defendant are providing, is affordable only by the rich and high-heeled, who are generally literate and understand the word ‘TAILOR’ and find the word ‘DARZI’ “exotic” and hence with high recall value, thereby serving very well the purpose of a trademark..Needless to state that a prima facie case having been found in favour of the plaintiffs, the plaintiffs will suffer irreparable injury from continued use by the defendant of the mark. A customer of a tailor, once lost, is unlikely to come back.”.Read judgment: