In the recent case before the Hon'ble Division Bench of the High Court of Delhi,
the issue at hand was whether a court could decline an injunction to a party,
despite its trademark being declared well-known, on the grounds of failure to
prove local use and reputation. The case involved a dispute between the
Plaintiff, holder of the well-known trademark "POLO," and the Defendant using "POLOLIFETIME."
The Plaintiff had initially secured an ex-parte injunction on 26.11.2020, which
was later vacated on 14.07.2023 by the Trial Court. The basis for the vacation
was the Plaintiff's purported failure to demonstrate use and reputation in
India. Notably, the Plaintiff's trademark had already been declared a well-known
trademark by the High Court of Delhi.
The Appellant relied on the earlier judgment of the Single Judge of the Delhi
High Court in The Polo/Lauren Company L.P. vs. Rohit S. Bajaj & Ors.
case, the court had already recognized the trademark "POLO" as a 'well-known'
mark under Section 2(1)(zg) of the Trade Marks Act, 1999. The Appellant argued
that this acknowledgment settled the issue of cross-border reputation in their
favor, making subsequent local use irrelevant.
The critical question before the Division Bench was the weight given to the
well-known status of a trademark when considering an injunction. The Appellant
contended that once a trademark is declared well-known, the presumption of
cross-border reputation arises, rendering subsequent local use immaterial.
Significance of Well-Known Trademarks:
The Division Bench, in staying the operation of the Trial Court's order,
indicated its inclination towards the Appellant's argument. The implication is
that the declaration of a trademark as well-known carries significant weight. In
such cases, the burden on the Plaintiff to prove local use may be relaxed, given
that the mark has achieved well-known status.
Presumed Cross-Border Reputation:
The key takeaway from this case is the presumption of cross-border reputation
attached to well-known trademarks. The Appellant successfully argued that the
mere fact that the sale of merchandise commenced later should be irrelevant in
the face of a well-established and well-known mark.
The Concluding Note:
The decision of the Hon'ble Division Bench underscores the significance of a
well-known trademark in legal proceedings. While local use are traditionally
vital elements in obtaining an injunction, the declaration of a trademark as
well-known can alter the dynamics. "This case sets a precedent suggesting that
once a mark achieves well-known status, the burden on the Plaintiff to prove
subsequent local use may be alleviated, emphasizing the global recognition and
reputation inherent in well-known trademarks."
The Case Law Discussed:
Case Title: Polo Lauren Vs Home Needs
Date of Judgement/Order:07/11/2023
Case No. FAO (COMM) 213/2023
Neutral Citation No: N A
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, HJ
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
Email: [email protected]
, Ph no: 9990389539