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Trademark Infringement in Export from India

The case of ROYAL STAG with Device of Stag (hereafter referred to as "Plaintiff") Vs. INDIAN STAG with Device of Stag (hereafter referred to as "Defendant") is a significant legal battle that delves into the complexities of trademark infringement, export, and the use of trademarks in India.

Both parties are involved in the alcoholic beverages industry, and the Plaintiff had been using its trademark since 1995, with the earliest trademark registration dating back to 1996.

In contrast, the Defendant was exclusively selling its products for export purposes with bills produced since 2015. The Hon'ble High Court of Delhi granted an interim injunction in favor of the Plaintiff after thoroughly examining the Defendant's defenses.

Trademark Infringement:
The heart of this case lies in the trademark infringement issue. The court invoked Section 29(2)(b) of the Trade Marks Act to analyze the situation. According to this section, if the essential features of the Plaintiff's mark are replicated in the Defendant's mark, infringement is deemed to have occurred.

In this case, all criteria set forth in the provision were met. The marks were similar, used for the same product, and consequently, there was a likelihood of confusion or association in the minds of consumers with average intelligence and imperfect recollection. Thus, the Defendant was found to have infringed the Plaintiff's mark.

Disclaimer on Trademark Registration:
The Defendant's defense based on the disclaimer attached to the word "ROYAL" was dismissed by the court. The Plaintiff emphasized that the "DEVICE OF STAG" was the essential feature, which had been copied by the Defendant. Consequently, the disclaimer concerning the "ROYAL" part of the Plaintiff's mark, which was granted during the registration of the "ROYAL STAG" mark, was considered irrelevant.

Section 17 of Trademark Act 1999 and Trademark Infringement:
Section 17 of the Trademark Act 1999 was also invoked by the Defendant, but the court found it not relevant to the case. The court concluded that the Plaintiff's "ROYAL STAG with Device of Stag" and the Defendant's "INDIAN STAG with Device of Stag" were similar as a whole, and there was a possibility of confusion. Therefore, Section 17 did not provide a valid defense.

Export from India as Use in India:
One of the critical aspects of this case is the Defendant's claim that their product was exclusively exported from India and that the "Device of Stag" was common to trade. The court, however, found in favor of the Plaintiff, stating that, within the meaning of Section 56 of the Trademarks Act 1999, export from India also constitutes use in India. This interpretation is significant because it reinforces the protection of trademarks even when products are primarily intended for export.

Publici Juris and Third Party Use:
The Defendants argued that the "ROYAL STAG" mark was not publici juris, and the publici juris character was attributed only to the "STAG" part of the Plaintiff's mark. However, the court ruled that this distinction became irrelevant as the Defendant's "INDIAN STAG" mark, as used for Indian Made Foreign Liquor (IMFL), was deceptively similar to the Plaintiff's "ROYAL STAG" mark.

The Defendant also relied on third-party use as a defense. They claimed that the Plaintiff was aware of the use of the "SCOTTISH STAG" mark but remained silent. However, the court found this argument lacking evidential support, as mere coexistence of the "SCOTTISH STAG" and "ROYAL STAG" in the same outlets in Dubai did not constitute evidence of the Plaintiff's knowledge of the "SCOTTISH STAG" mark.

The Concluding Note:
The case of ROYAL STAG Vs. INDIAN STAG exemplifies the intricacies involved in trademark infringement cases, particularly when export from India is a significant element.

The court's rulings on trademark similarity, the significance of disclaimers, and the interpretation of export as use in India underscore the importance of protecting intellectual property rights in a globalized world.

Additionally, the court's dismissal of the publici juris and third-party use defenses highlights the need for substantial evidence in legal proceedings involving trademark disputes. This case sets a precedent for the safeguarding of trademarks in export-oriented industries in India and provides valuable insights into the nuanced world of intellectual property law.

The Case Law Discussed:
Case Title: Pernod Ricard India Private Limited Vs A B Sugars Limited
Date of Judgement/Order:31/10/2023
Case No.CS(COMM) 371/2019
Neutral Citation No: 2023:DHC:7842
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.

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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