Effect of suppression of Trademark's Disclaimer
The subject matter Suit was filed by the Plaintiff on the basis of
proprietary right in the trademark Columbia since the year 1938. The plaintiff
has claimed to have used the said trademark world wide and also claimed to have
trademark registration worldwide.
The plaintiff also claimed to have obtained various trade mark registrations in
India. The plaintiff has filed the suit for infringement of trademark and
passing off against the defendants. The plaintiff claimed 6 trademarks
registrations in India. The plaintiff claimed its trademark to be a well known
The plaintiff claimed to have started exporting the products under the subject
matter trademark in India since the year 1996.The plaintiff claimed trans border
reputation, which spilled over to India. The subject matter suit was filed
against the defendants as plaintiff alleged the shoes used by the defendant, are
of inferior and cheap quality, thereby are tarnishing the goodwill and
reputation in India.
The plaintiff was able to obtain the ex-parte injunction in the suit. The matter
has been settled with defendant no.1. After service of the summons of the suit,
the defendant no.2 appeared and filed written statement and application under
Order 39 Rule 4 CPC. The plaintiff's interim injunction application under Order
39 Rule 1 & 2 CPC and defendant no.2's application under Order 39 Rule 4 CPC was
disposed of by virtue of the present Judgment.
Brief Defense Of The Contesting Defendant No.2:
The defendant no.2 alleged that
his user of trade mark 'Columbia' is honest and he is the prior adopter and
continuously and extensively using this mark in relation to his goods since
1995. The defendant has also alleged that its trade mark application under No.
1126256, was wrongly shown as abandoned by the plaintiff in the plaint.
status of the TM application of defendant No. 2 has already been changed to be
pending and not abandoned in view of Writ filed by the defendant no.2 in Hon'ble
High Court of Delhi. This factum has been suppressed by the plaintiff. The
defendant no.2 also alleged that plaintiff wrongly has not disclosed in the
plaint that there is disclaimer qua three of the registrations of the plaintiff.
The defendant no.2 also alleged that the plaintiff has no trans border
reputation in India and that the plaintiff has miserably failed to establish the
The Hon'ble Court has discussed the effect of non mentioning of disclaimer
condition in the plaint. The Court returned the finding that non disclosing the
disclaimer condition on 3 of trademarks registrations does amount to material
The relevant portion of the judgment dated 28.04.2017, pronounced by Hon'ble
Delhi High Court in Suit bearing CS(COMM) 1611/2016 titled as Columbia
Sportswear Company Vs Harish Footwear & Other to this effect , is produced as
here in below:
Copies of his registration certificates showing his registration in India have
been placed on record. There are six such registrations; details of which finds
mention in para 16 of his plaint. Admittedly there is a disclaimer prevailing
qua three such registrations i.e. registration No. 626883 dated 02.05.1994,
registration No. 1380753 dated 30.08.2005 and registration No. 1585010 dated
27.07.2007. The other three registrations are alone clear. They have no
disclaimer pending against them. This position is admitted. Thus the first
registration which is in favour of the plaintiff is registration NO. 1585010
dated 27.07.2007 which is a registration in class 18 and class 25.
While dealing with this application, this Court is largely concerned with the
items contained in clause 25. This registration is in favour of the plaintiff
qua clothing, headwear and footwear. It dates back to 27.07.2007. Para 16 of the
plaint additionally states that these registrations are valid and subsisting as
on date.10 This position is not quite correct. Admittedly there are disclaimers
qua three such registrations and as noted supra, they have been admitted by the
This has however not been detailed by the plaintiff in his plaint. In para 40 an
evasive statement has been made that in order to register an FIR on the plea of
disclaimer, an opinion had been sought from the Registrar of Trademarks which
opinion was in favour of the plaintiff. This is the end of the matter. There is
no further details of any disclaimer; para 40 relied upon in the plaint does not
disclose that a disclaimer had been set up by defendant No. 2 or that the
disclaimer is alive and as such the afore
noted three registrations are not clear; there being a disclaimer admittedly
attached to them. This in the view of this Court is a concealment which has been
made by the plaintiff for which he has no explanation. The Hon'ble Court has
also dealt with the issue of not disclosing the exact status of trade mark
application of the defendant no.2. The plaintiff mentioned in the plaint that
the trade mark application of the defendant no.2 has been abandoned.
is that the status of the trade mark application of the defendant no.2 has been
changed from abandoned to pending in Writ filed by the defendant no.2. This
concealment does amount to be material suppression. The relevant portion of the Judgement to this effect, is produced as here in below:
'The second suppression of fact which amounts to a concealment of a material
fact is the fact that defendant No. 2 had applied for registration of his mark.
Vide TM application No. 1126256, he had been granted the status of pending in W.P.
(C) No.5866/2013 which had been disposed of on 16.07.2014. This order had
directed the trade mark authorities to treat the application of defendant No. 2
as per its original seniority i.e. from the date of its filing. Defendant No. 2
in his list of documents on the first page has filed the Court order dated
16.07.2014 which reflects that this order had been uploaded in the Trade Mark
Registry on that date itself.
The present suit has been filed on 19.07.2014.
Amended plaint had been filed on 16.10.2014. The status of this TM application
that it had reverted to a pending status and was no longer abandoned had not
been disclosed by the plaintiff. This has been admitted by the plaintiff only in
his replication. The fact that the TM Application of defendant No.2 was
'pending' on the date of the filing of the suit and was not abandoned is also in
the view of this Court an active concealment which would perhaps disentitle the
plaintiff to a discretionary relief.'
The Hon'ble Court has also discussed the issue of trans border reputation. The
Court has returned the finding that the plaintiff has failed to prove its
presence in India. The plaintiff has failed to put on record to show any
advertisement or sale in India. The plaintiff's trademark may be a well known
trademark but the plaintiff could not show its presence in India, hence benefit
of trans border reputation was not given to plaintiff.
The relevant portion of
the Judgment to this effect is being reproduced as herein below: The plaintiff
has a registration of the year 2007 in India. He has however in his entire
volume of documents (running into three parts) has not been able to show any
advertisement which he has effected in India wherein his product has been
advertised or he is selling the same i.e. shoes under the trade name Columbia.
It appears that the plaintiff has no market in India.
He may be a well known
name in foreign countries but his presence in India has not been depicted; it
cannot be seen from any of the documents which had been filed by the plaintiff.
His trans-border reputation, if any, has not travelled to India.'
The Hon'ble Court also given due consideration to this fact that the defendant
no.2 has shown its user since the year 2002. Hence the right of the defendant
no.2 has to be protected.
The relevant portion of the Judgment to this effect is
being reproduced as herein below: Although, the advertisements of defendant No.2
reflects that he is selling shoes under the brand name not only of Columbia but
also of COLUMBUS and COPPER LAND which are all footwear of defendant No. 2
company yet this Court is of the view that he cannot, at this stage, be
restrained from using the trade name Columbia as he has been able to prima-facie
show his active presence in the market from the year 2002 which has been
reflected not only through his advertisements but also his sale invoices. His
sale figures which include sale of Columbia shoes is also on record.
Thus, defendant No. 2 has been able to establish that he is selling shoes under
the trade name Columbia from the year 2002. The Hon'ble Judge also gave due
given due consideration to this fact that there is huge price difference between
the price of shoes of the plaintiff and the defendant no.2. The relevant
portion of the Judgment to this effect is being reproduced as herein below: This
by itself would not be reason enough for them to discontinue to buy the shoes of
the plaintiff which are also more heavily priced than the shoes of defendant No.
2 which are only priced at Rs.500-600/- in comparison with the shoes of the
plaintiff which sell at Rs. 3,000/- a pair.
Application of the plaintiff filed under Order 39 Rule 1 & 2 CPC was
dismissed and application of the defendant no.2 filed under Order 39 Rule 4 CPC
Written By: Ajay Amitabh Suman, Advocate
Law Article in India
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