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Prior User Of Trademark In India v/s Prior Adopter Of Trademark In World

In a recent legal battle over trademark rights, both VIP and Carlton filed suits against each other claiming to be the registered proprietor of the trademark "CARLTON". The issue before the Hon'ble Court was to determine the party entitled to proprietary rights in the trademark and to assess whether infringement claims could be granted.

Suit For Infringement Not Maintainable Against Another Registered Proprietor:

The Court started by acknowledging that both parties were indeed the registered proprietors of the trademark CARLTON. This fact alone posed a challenge to the court, as granting relief for trademark infringement would not be maintainable when both parties had equal rights to the trademark.

The Principle Of Territoriality Of Goodwill Affirmed:

However, the Court delved further into the evidence presented by both parties. VIP failed to establish a trans-border reputation that spilled over into India. A trans-border reputation is when a trademark develops a significant level of goodwill and reputation beyond the boundaries of its country of origin. In this case, VIP could not provide evidence to show that their CARLTON trademark had gained such reputation in India.

The First In India Has Superior Right Over First In The World Market, Subject To Few Condition:

On the other hand, CARLTON India successfully proved that it was the prior adopter and user of the CARLTON trademark in India. This means that they were the first ones to use the CARLTON trademark in connection with their goods or services in India. This played a significant role in the Court's decision-making process.

Despite VIP being the prior adopter of the CARLTON trademark worldwide, the Court deemed it immaterial in determining the outcome of the case. The reason was that VIP could not establish any significant level of goodwill or reputation in India, the jurisdiction where the dispute was taking place. Consequently, their prior adoption of the trademark did not hold much weight in the final decision.

Taking all these factors into consideration, the Court granted an injunction in favor of CARLTON India, prohibiting VIP from using the CARLTON trademark in India. On the other hand, VIP's request for an injunction was refused, as they failed to establish their rights and reputation in India.

No Right To First In The World Market, In Case He Fails To Proves Reputation In India

This case serves as a reminder that in trademark disputes, the jurisdiction in which the rights are being claimed plays a crucial role. Merely being the prior adopter of a trademark globally does not automatically grant exclusive rights in specific jurisdictions. The party claiming infringement must prove their prior adoption and use in the relevant jurisdiction and establish a significant level of goodwill and reputation. Failure to do so can result in injunctions being granted against them, as was the case with VIP in this matter.

The Case Law Discussed:
Case Title: Carlton Shoes Limited Vs VIP Industries Limited
Date of Judgement:17.07.2023
Case No.CS Comm 730 of 2019
Neutral Citation:2023:DHC:4865
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: Prathiba M Singh, H.J.

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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