The case in question pertains to a dispute between two entities: the Plaintiff,
holding the trademark 'IOD' representing 'Institute of Directors,' and the
Defendant, accused of infringing upon this trademark by using 'Directors
The Plaintiff initiated the litigation, asserting its exclusive rights over the
trademark 'IOD,' claiming that the Defendant's use of 'Directors Institute'
infringed upon its registered mark. However, the Defendant's defense was
anchored on a seemingly contradictory stance adopted by the Plaintiff during the
examination of its trademark application.
Contradictory Standpoint of the Plaintiff:
A pivotal point of contention arose from the Plaintiff's response to the
examination report concerning its trademark application. In its reply, the
Plaintiff contended that the words constituting the mark, being common English
language words, were merely descriptive in nature. The Plaintiff argued that
such generic and descriptive terms could not vest exclusive proprietary rights
in any single entity.
The case unravels complex legal intricacies concerning the doctrine of 'acquired
distinctiveness' and the principle of 'estoppel by conduct.'
The Plaintiff's initial stance, recognizing the descriptive nature of 'IOD,' may
have inadvertently weakened its claim to inherent distinctiveness. This
acknowledgment could be leveraged by the Defendant to argue against the
exclusive proprietary rights asserted by the Plaintiff.
Estoppel by Conduct:
The doctrine of estoppel prevents a party from asserting a claim or right that
is contradictory to its previous actions or statements if such assertion would
unfairly prejudice another party. In the present case, the Plaintiff's earlier
admission regarding the descriptive nature of the mark could estop it from
subsequently asserting exclusive rights over the same mark against the
The Hon'ble High Court of Delhi, in its wisdom, declined to grant an injunction
in favor of the Plaintiff. The Court's decision seems to be predicated on the
Plaintiff's own admission regarding the descriptive nature of the mark 'IOD.' By
adopting a contradictory stance, the Plaintiff inadvertently undermined its
claim, thereby providing the Court with a rationale to rule in favor of the
The Concluding Note:
Trademark disputes necessitate a meticulous examination of facts, legal
principles, and precedents. The case involving the Plaintiff's trademark 'IOD'
underscores the significance of consistency in legal assertions and the
potential ramifications of adopting contradictory stances.
The Case Law Discussed:
Case Title: Institute of Directors Vs Worlddevcorp Tachnology and Business
Date of Judgement/Order:11.12.2023
Case No. CS Comm 611 of 2023
Neutral Citation No:2023:DHC;8923
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar HJ
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539