The case at hand revolves around a contentious trademark dispute concerning the
mark "KHADI." While the plaintiff's trademark pertains to the implementation of
programs for the development of Khadi and related industries, the defendant has
utilized variations of the mark for products like soaps and detergents. This
article delves deep into the legal intricacies of establishing goodwill in the
context of passing off actions, drawing insights from the court's observations
and the broader legal framework.
The concept of passing off is rooted in the protection of intellectual property
rights and consumer interests. It prevents one party from misrepresenting its
goods or services as those of another, thereby causing confusion among consumers
and potentially harming the goodwill and reputation of the latter.
To succeed in a passing off action, the plaintiff typically needs to establish
three key elements:
Analysis of the Court's Observations:
- Goodwill and Reputation: The plaintiff must demonstrate that they have built a substantial reputation or goodwill in the market concerning the asserted mark or trade name.
- Misrepresentation: The plaintiff must show that the defendant has made a misrepresentation leading or likely to lead the public to believe that the goods or services offered by them are those of the plaintiff.
- Damage: The plaintiff must prove that they have suffered or are likely to suffer damage due to the defendant's actions.
In the present case, the court's evaluation primarily centered on the
establishment of goodwill and reputation by the plaintiff. The court
meticulously examined whether the plaintiff had prima facie evidence to
substantiate the claim of having acquired goodwill or reputation for the mark "KHADI,"
particularly concerning soaps, before the defendant's adoption of the mark.
Lack of Prima Facie Evidence:
The court's observation underscores a fundamental principle in passing off
actions: the importance of establishing prior goodwill and reputation. In the
absence of such evidence, the plaintiff's claim becomes untenable.
The court noted that there was no evidence to suggest that the plaintiff had
acquired goodwill or reputation in the mark "KHADI" for soaps before 2001, the
year the defendant began using the mark "GIRDHAR KHADI." Furthermore, even by
2005, when the defendant's mark was registered in the plaintiff's favor, the
plaintiff failed to demonstrate prior goodwill or reputation for soaps.
The court's decision highlights the stringent evidentiary requirements in
passing off actions, especially concerning the establishment of goodwill and
reputation. Mere registration of a trademark does not automatically confer the
right to claim passing off against similar or related marks.
For plaintiffs, especially in cases involving established marks, it becomes
imperative to maintain meticulous records demonstrating the acquisition and
sustenance of goodwill and reputation over time, especially concerning specific
goods or services.
The Concluding Note:
From a broader legal standpoint, this case serves as a reminder for businesses
and trademark holders to proactively protect their intellectual property rights,
not just through registration but also by building and preserving goodwill and
reputation in the marketplace.
In conclusion, while the plaintiff's endeavors to protect the mark "KHADI" are
commendable, the court's decision underscores the criticality of robust
evidence, particularly concerning goodwill and reputation, in establishing a
successful passing off action.
Case Title: Khadi and Village Industries Vs Girdhar Industries
Date of Judgement/Order:28.12.2023
Case No. CS Comm 878 of 2023
Neutral Citation: 2023:DHC:9435
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar
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