Trademark disputes often arise when two parties claim ownership of the same or
similar trademarks for identical or closely related goods. In such cases, the
fundamental question that emerges is whether one registered proprietor of a
trademark can sue another registered proprietor for infringement. This legal
conundrum was recently addressed by the Hon'ble High Court of Delhi in a case
involving Carlton and VIP Industries, both claiming to be registered proprietors
of the trademark "CARLTON." This article delves into the intricacies of the case
and the court's insightful interpretation of the law.
The Parties and Their Trademarks:
The dispute revolved around the trademark "CARLTON" and its use in relation to
Class 18 products, such as leather goods, trunks, and travel bags. Carlton
London, one of the litigants, applied for the registration of the word mark
"CARLTON" in India on May 6, 1994, specifically for Class 18 goods, and
successfully obtained registration. VIP Industries, on the other hand, acquired
the "CARLTON" marks, along with the associated goodwill, from Carlton
International PLC through an Assignment Agreement dated March 25, 2004, and
subsequently secured registration for the "CARLTON" mark in Class 18 on April
21, 2006.
The Legal Question:
"With both parties holding registrations for the same trademark, the pivotal
legal issue arose: can one registered proprietor of a trademark sue another
registered proprietor for trademark infringement?" This question hinged on the
interpretation of Section 28(3) of the Indian Trademarks Act.
Section 28(3) of the Indian Trademarks Act 1999:
Section 28(3) of the Indian Trademarks Act deals with situations where two or
more persons are registered proprietors of trademarks that are identical or
closely resemble each other, provided these trademarks are registered for
similar goods. The question of exclusive rights to use these trademarks against
each other arises in such cases. The central query is whether the act of
registration automatically grants one registered proprietor the exclusive right
to sue the other for infringement.
The Legal Interpretation:
The Hon'ble High Court of Delhi, in addressing this legal issue, turned to a key
precedent, the judgment of the Hon'ble Supreme Court of India in the case of S.
Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683. In this landmark decision,
the Supreme Court provided significant guidance on the interpretation of Section
28(3) of the Trademarks Act.
:The Supreme Court, in its judgment, clarified that when two or more persons are
registered proprietors of trademarks that are identical or nearly resemble each
other, and these trademarks are registered for similar goods, the exclusive
right to use these trademarks shall not be deemed to have been acquired by one
registered proprietor against the other, merely on account of registration. In
essence, registration does not confer the right to sue for infringement in cases
where registered proprietors hold similar trademarks for similar goods."
The High Court's Decision:
Building upon the Supreme Court's interpretation of Section 28(3), the Hon'ble
High Court of Delhi concluded that in the case of Carlton and VIP Industries,
both of whom were registered proprietors of the trademark "CARLTON" for Class 18
goods, neither party could assert an exclusive right to sue the other for
trademark infringement.
The court's decision, therefore, affirmed that both Carlton and VIP Industries
could not allege infringement of their registered trademarks "CARLTON" against
each other. This interpretation aligns with the overarching objective of
trademark law, which seeks to protect the interests of registered proprietors
while also fostering competition and consumer choice.
The concluding Note:
The case of Carlton and VIP Industries underscores the importance of a nuanced
understanding of trademark law, particularly concerning the rights and
limitations of registered proprietors against another one. "The interpretation
of Section 28(3) by the Hon'ble High Court of Delhi, in line with the Supreme
Court's guidance, reaffirms that the mere act of registration does not grant one
registered proprietor the exclusive right to sue another for trademark
infringement when the trademarks and goods in question are similar."
Case Law Discussed:
Case Title:Carlton Shoes Limited Vs VIP Industries Limited
Date of Judgement:17/07/2019
Case No. Co Comm 730 of 2019
Neutral Citation No: 2023:DHC:4865
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Jyoti Singh
Disclaimer:
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and
Trademark Attorney
Email:
[email protected], Ph no: 9990389539
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