Prior user Triumph over subsequent Trademark registrant

Intellectual Property By 0

This judgment settles that in trademark disputes involving registered marks, no statutory infringement action lies against another registered proprietor under Section 28(3) of the Trade Marks Act, 1999, but passing off remains actionable under common law via Section 27(2), provided the plaintiff proves prior goodwill predating the defendant’s use, misrepresentation, and damage.

Prima Facie Pitfalls: Delhi High Court’s Stance on Finality in Trademark Rectification Proceedings

Intellectual Property By 0

The Division Bench’s reasoning pivoted on a critical procedural distinction between interim relief and final rectification under Section 57 of the Act. While acknowledging the Single Judge’s analysis of phonetic similarity—observing that “INSEAD” and “INSAID” shared auditory traits that could invoke initial interest confusion, especially in educational services—the court noted that these conclusions were repeatedly qualified as “prima facie.” For instance, the Single Judge held that phonetic similarity existed based on examples like “dead” and “said,” and that even enlightened students might experience momentary wonderment upon encountering the marks, satisfying the likelihood of confusion test under Section 11.