Trademark infringement lawsuits are the frontline defenders of brand integrity
and intellectual property rights. A trademark, often the emblem of a business's
identity, merits unwavering protection. In this article, we dive into the realm
of trademark infringement litigation in India, focusing on the critical role
played by delayed injunctions.
Trademark infringement, characterized by the
unauthorized use of a confusingly similar mark, can lead to consumer confusion
and significant harm to the rightful owner. Traditionally, obtaining an
injunction has been a swift legal remedy to halt such infringement. However, the
significance of delayed injunctions cannot be underestimated. This article
explores the implications and legal intricacies of such delays, shedding light
on their impact on both trademark holders and alleged infringers.
A trademark is defined in Section 2(zb) of the Trade Marks Act, 1999. It
encompasses a word, phrase, symbol, or design used to identify and distinguish
the goods or services of one party from those of others. Whereas, the
infringement of a registered trademark, as defined in Section 29, occurs when
someone uses a trademark that is identical or confusingly similar to a
registered trademark without the permission of the trademark owner.
In cases of alleged trademark infringement, the trademark owner may seek an
injunction, as specified in Section 135 of the Act, to prevent the infringer
from continuing to use the trademark. An injunction, in the context of trademark
infringement, is a court order that prohibits someone from doing something.
Injunctions are generally granted in trademark infringement cases, but there are
One exception is if the trademark owner has delayed in bringing
the lawsuit. The law of acquiescence allows a court to deny an injunction if the
trademark owner has waited too long to file the lawsuit. Section 33 of the
Trademark Act 1999 holds a particular relevance when examining the significance
of delayed injunctions in trademark infringement lawsuits.
stipulates that if a trademark holder has knowledge of infringement and delays
taking legal action, they may still seek relief. However, the delay in enforcing
their rights might be a factor considered by the court when determining the
extent of the injunction or damages awarded.
This legal provision underscores
the importance of timely action by trademark holders while recognizing that
delayed injunctions can indeed be sought, albeit with potential implications on
the relief granted. To establish a defence of acquiescence, the defendant must
demonstrate that the plaintiff knew about the trademark use and refrained from
objecting for a continuous period of 5 years, as specified in Section 33 of the
Trademark Act 1999.
In the Essel Propack v. Essel Kitchenware
case, it is essential to consider the
precedent set by the Bombay High Court in the case of Hindustan Pencils v Indian
Stationery from 1989. In this earlier case, the court delved into the intricate
issue of whether a delay in taking legal action against trademark infringement
amounted to acquiescence. The Bombay High Court's ruling provides crucial
insights into the dynamics of delay as a defence in trademark infringement
The court, in its wisdom, discerned that mere delay alone was not
necessarily a sufficient defence to an action for interim injunction. It
recognized the need to differentiate between honest and dishonest use of a
trademark by the defendant when assessing the impact of delay. In cases where
the defendant was found to be using the trademark honestly and in good faith,
the court acknowledged that delay, when combined with demonstrated prejudice to
the defendant, could be a valid defence against an interim injunction.
distinction acknowledges that in certain scenarios, the delay in enforcing
trademark rights might not necessarily imply acquiescence if the defendant was
acting in good faith. However, the court's judgment in Hindustan Pencils v
also drew a clear line when it came to dishonest use of a
trademark. Even in cases where there was significant delay on the part of the
plaintiff, the court asserted that an injunction might not be denied if the
defendant was found to be engaging in dishonest and infringing activities.
Therefore, when examining the Essel Propack v. Essel Kitchenware case
, it is
essential to recognize that the Bombay High Court's nuanced approach to delay in
Hindustan Pencils v Indian Stationery laid the groundwork for a more
comprehensive understanding of how delay and acquiescence are assessed in
trademark infringement cases. This legal precedent underscores the importance of
considering both the nature of the defendant's use and the impact of delay when
determining the validity of an interim injunction in trademark disputes.
However, the Essel Propack v. Essel Kitchenware
case serves as a stark reminder
of the consequences of delayed injunctions in trademark infringement lawsuits.
The court shifted the perspective on delay and acquiescence, asserting that
inaction and failure to take effective steps to stop the defendant from
infringing the plaintiff's trademark could amount to "encouragement," tantamount
This decision highlights the need for trademark owners to be
proactive in protecting their rights and not inadvertently encourage infringing
behavior through inaction. Furthermore, the court's emphasis on the registration
of trademarks in different classes underscores the importance of understanding
the boundaries of exclusivity and taking appropriate legal action to safeguard
In the case of Modern Foods v. Modern Snacks, the Delhi High Court considered
both the plaintiff's rights and the defendant's longstanding use and
registration of the mark. It recognized that delay should not necessarily
disentitle a plaintiff from obtaining an interim injunction, but it can impact
the scope of the injunction granted.
The Court considered the defendant's claim
that they exclusively used the "MODERN" mark for specific products and had not
expanded their product range. In response, the court issued a limited interim
injunction, allowing the defendant to use the "MODERN" mark only for their
existing products covered by their existing registrations at the time of the
The court also imposed obligations on the defendant,
including disclosing their current products and associated marks, providing
bi-annual sales reports for "MODERN" marked products, and prohibiting the use of
the "MODERN" mark on other product categories during the lawsuit's pendency.
This approach ensures fairness and equity in trademark disputes by acknowledging
the unique characteristics of each case and the potential consequences of delay
in taking legal action.
In this case of Sun Pharma Laboratories Ltd. Vs. Finecure Pharmaceuticals Ltd. &
Ors., the plaintiff's significant delay in seeking relief weighed against their
case. The court ruled against the plaintiff, finding that they had not
established their entitlement to relief against the infringement of the
"PANTOCID" mark by the defendants using the "PANTOPACID" mark.
recognized that the defendants had become a significant presence in the market
during this time frame and that abruptly halting their use of the trademark
could have adverse consequences. To strike a balance, the court ordered the
defendants to maintain records of earnings derived from using the disputed mark.
This approach allowed for continued examination of the case while ensuring
transparency regarding the defendant's financial gains, serving the interests of
justice during ongoing proceedings.
Trademark infringement lawsuits are often marked by the pursuit of injunctions,
it can be a complex and time-sensitive legal journey. When confronted with the
prospect of delayed injunctions, trademark holders and accused infringers should
carefully strategize their approaches to protect their interests effectively.
Below are practical tips for both parties:
For Trademark Holders:
- Early Action is Key: Swiftly identify potential trademark infringements and take action promptly. The earlier you initiate legal proceedings, the better your chances of securing a timely injunction.
- Gather Comprehensive Evidence: Recognize the importance of strong evidence to support your case. Collect and preserve evidence of consumer confusion, financial losses, and any other pertinent information.
- Engage Experienced Legal Counsel: Seek the guidance of legal professionals with expertise in trademark litigation. They can help you navigate the legal complexities and present a compelling case for an injunction.
- Consider Interim Measures: While awaiting a final injunction, explore interim measures like cease and desist letters. These can serve as warnings to the alleged infringer and demonstrate your commitment to protecting your rights.
For Accused Infringers:
Strategic Considerations for Both Parties:
Mediation and Alternative Dispute Resolution:
- Assess the Allegations: Carefully evaluate the allegations against you to determine their validity. If you believe the trademark holder's claims lack merit, consider preparing a robust defense strategy.
- Consult Legal Counsel: Engage legal experts experienced in trademark defense. They can help you understand your rights and potential defenses against the allegations.
- Preserve Evidence: Just as trademark holders need strong evidence, it's essential for accused infringers to preserve any evidence that supports their case. This includes evidence of non-infringement or evidence of the trademark holder's acquiescence to the alleged infringement.
- Seek Negotiation: Explore the possibility of negotiation or settlement talks with the trademark holder. A mutually beneficial resolution can be more cost-effective and efficient than protracted litigation.
- Prepare for Injunction Impact: If a delayed injunction is likely, prepare for its impact on your business operations. Consider adjusting your marketing and branding strategies while complying with legal restrictions.
In cases where delayed
injunctions seem inevitable, both parties can explore mediation or alternative
dispute resolution methods. These approaches can lead to quicker resolutions
while preserving relationships and resources.
Trademark holders and accused infringers should
prioritize brand preservation. A protracted legal battle can damage the
reputation of both parties. Maintain brand integrity throughout the process.
In the intriguing drama of trademark infringement lawsuits, timing emerges as
the silent protagonist. Much like a suspenseful plot twist in a thrilling novel,
the timing of trademark holder's actions can determine the outcome. Accused
infringers, too, must carefully craft their defence, akin to characters
preparing their lines for the courtroom stage. So, in this legal narrative,
remember that timing isn't just a supporting role it's the twist that keeps us
all on the edge of our seats, waiting to see how the story unfolds.
Award Winning Article Is Written By: Ms.Yamini Mahawar
Authentication No: OT365947277688-20-1023