Certification trademarks (CTMs) hold a special place in intellectual property law as they signify that the goods or services meet specific standards set by the certifying authority. This article analyzes a legal case involving a prominent Scrum certification organization ("the Plaintiff") and a defendant accused of infringing on the Plaintiff's registered certification trademark.

Background:
The Plaintiff claimed to be the leading Scrum certification organization, having certified a significant number of practitioners globally, with a substantial presence in India. The core of the dispute revolved around the Plaintiff's registered certification trademark, which included the CSM (Certified ScrumMaster) and CSM Logo in a Sun Motif. The Defendant, while holding a registration for the trademark CSM since 2012, had not obtained certification status for the mark.

Legal Framework:
The case hinged on Section 75 of the law, which defines infringement of CTMs. According to this section, infringement occurs when an unauthorized party uses an identical or deceptively similar mark in the course of trade, in connection with goods or services covered by the registered CTM. In this context, the court examined whether the Defendant's adoption of the CSM Logo in a Sun Motif constituted an infringement of the Plaintiff's registered certification trademark.

Court's Analysis:
The Hon'ble High Court of Delhi carefully scrutinized the facts of the case and applied the legal provisions governing CTMs. The Plaintiff's claims were based not only on their certification activities but also on the registered certification trademark. "The court observed that the Defendant could not provide a satisfactory explanation for adopting the "sun" motif, leading to the inference that the idea was borrowed from the Plaintiff's registered trademark."

Infringement and Borrowed Sun Motif:
The court's decision to grant an interim injunction pertaining to relief of infringement against the Defendant was grounded in the finding that the Defendant's use of a similar "sun" motif in connection with the CSM Logo amounted to infringement. The absence of a credible explanation from the Defendant strengthened the court's position that the motif had been borrowed from the Plaintiff's registered certification trademark. This highlights the importance of protecting not only the literal elements of a trademark but also its conceptual aspects, such as motifs and designs.

Relief of Passing Off:
While the court granted an interim injunction on the infringement claim, it declined to provide relief on the passing off aspect. This decision underscores the court's specific focus on the registered certification trademark and its role in preventing unauthorized use by adopting a similar or identical mark.

The Concluding Note:
"The case underscores the significance attached to registered certification trademarks in protecting the rights of certifying organizations." The court's analysis of infringement, coupled with the consideration of borrowed motifs, sets a precedent for upholding the distinctiveness and integrity of certification trademarks.

The Case Law Discussed:
Case Title: Scrum Alliance Inc Vs Mr. Prem Kumar and Ors
Date of Judgement/Order:21/11/2023
Case No. CS Comm 700 of 2021
Neutral Citation No: 2023:DHC:8346
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge C Harishankar, HJ

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