In a recent legal development, the Hon'ble High Court of Delhi addressed the
pivotal question of granting an ex parte injunction in an action for passing
off, specifically focusing on the common law rights associated with the
trademark EMERALD. The case involved both the Plaintiff and the Defendant being
registered proprietors of the trademark EMERALD, leading the Hon'ble Single
Judge to assess the relief of passing off against the Defendant.
Facts of the Case:
The Plaintiff, a prominent manufacturer of various products, claimed extensive
use of the EMERALD trademark since 1990, particularly in the manufacturing of
valves, hot water generators, expansion tanks, humidifiers, vacuum degassers,
and cooling tower filtration systems. On the other hand, the Defendant,
incorporated on June 24, 2022, specialized in manufacturing and selling valves
such as butterfly valves, globe valves, and check valves. The Defendant applied
for the mark 'EMERALD' on July 7, 2022 as proposed to be used basis, for which
with registration was granted.
Despite both parties being registered proprietors of the EMERALD trademark, the
Court emphasized the settled legal position that the prior user of the mark is
entitled to protection, irrespective of recent registrations held by
competitors. The recent registration of the Defendant did not diminish the
likelihood of an injunction being granted.
The Hon'ble Single Judge established
a prima facie case in favor of the Plaintiff based on the following grounds:
- Identity of Trademark and Trade Name:
The Court noted that the impugned trademark and trade name of the Defendant were identical to those of the Plaintiff.
- Identity of Goods and Customers:
The goods offered by both parties were identical, and the customer class served was the same.
- Long Prior Use:
The Plaintiff's extensive prior use of the EMERALD mark for valves, dating back to 1990, weighed significantly in their favor.
- Arbitrary Nature of the Mark:
[Your content for the fourth point here]
The Court highlighted that the EMERALD mark was entirely arbitrary, and the
Defendant's recent adoption was not bona fide.
Precedent from Supreme Court:
The decision drew upon the dictum laid down by the Hon'ble Supreme Court of
India in Laxmikant V. Patel v. Chetanbhai Shah (MANU/SC/0763/2001). The Supreme
Court emphasized that in cases where passing off is established, an immediate
ex-parte injunction should be granted. Additionally, the Supreme Court
recommended the appointment of Local Commissioners to ensure that infringing
products are not permitted to be sold.
The Concluding Note:
This decision by the Hon'ble High Court of Delhi sets a noteworthy precedent,
affirming that even in passing off actions, the Court should grant an ex parte
injunction when a prima facie case exists in favor of the Plaintiff. This
underscores the importance of protecting the rights of the prior user and
ensuring that potential action of passing off action is promptly addressed,
aligning with the principles laid down by the Supreme Court.
The Case Law Discussed:
Case Title: Emerald Enterprises Vs Emerald Valves Private Limited
Date of Judgement/Order:21/11/2023
Case No. CS(COMM)817/2023
Neutral Citation No:NA
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, 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