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2012 Supreme(Del) 1567
High Court of Delhi
MANMOHAN SINGH
A.P. Moller – Maersk A/S & Another
Versus
Maersk Mining & Exploration Private Limited
CS (OS) NO. 1787 OF 2012
Decided on : 01-06-2012
Advocates appeared:
For the Defendant: None.
In cases of trademark infringement, delay in bringing the action does not defeat the grant of injunction, and the adoption of the mark must be honest to avoid infringement.
Headnote:
TRADEMARK - INFRINGEMENT - TRADE MARKS ACT, 1999 - SECTION 29(4)
Fact of the Case:
The plaintiffs sought an injunction against the defendant from using the word MAERSK as part of its corporate name and trading style, and also using MAERSK as a service mark in relation to its mining and exploration services under Section 29(4) of the Trade Marks Act, 1999.
Finding of the Court:
The court found that the plaintiffs had a right to obtain relief in respect of infringement of the trademark MAERSK under Section 29(4) of the Act, and that the defendant's adoption of the mark was not honest, thus a strong case for grant of interim injunction was made out.
Issues: The issues included the infringement of the registered trademark MAERSK, the reputation of the mark in India, and the defendant's use of the mark in relation to its business.
Ratio Decidendi: The court held that the adoption of the mark was not honest, and that the balance of convenience lay in favor of the plaintiffs and against the defendant. It also emphasized that delay in bringing the action did not defeat the grant of injunction in cases of trademark infringement.
Final Decision: The defendant was restrained from using the word MAERSK as part of its corporate name and trading style, and also using MAERSK as a service mark in relation to its mining and exploration services. The defendant was granted three weeks time to change or amend the name of its corporate name by deleting the mark MAERSK.
MANMOHAN SINGH, J.
I.A. No.11246/2012, I.A. No.11247/2012 & I.A. No.11248/2012 (u/S 151 CPC for exemption)
These applications have been filed by the plaintiffs under Section 151 of CPC, seeking exemption from filing the original, fair typed copies of the dim documents and documents in legal size and translated copies of the international registration certificates at this stage.
Heard. For the reasons stated in the applications, the same are allowed and eight weeks time is granted to file the same.
The applications are disposed of.
CS(OS) 1787/2012
Let the plaint be registered as a suit. Additional affidavit and documents are taken on record.
Issue summons to the defendant, on filing of process fee and registered AD cover within one week, returnable on 30.07.2012.
I.A. No.11245/2012 (u/O XXXIX, R.1 & 2 CPC)
1. Issue notice for the date fixed.
2. In this application, the plaintiffs are seeking an injunction against the defendant from using the word MAERSK as part of its corporate name and trading style MAERSK MINING AND EXPLORATION PRIVATE LIMITED and also using MAERSK as a service mark in relation to its mining and exploration services under Section 29(4) of the Trade Marks Act, 1999 (hereinafter referred to as the Act). Learned counsel for the plaintiffs is pressing for an ex-parte ad-interim orders in view of facts stated in the plaint and documents placed on record.
3. The case of the plaintiffs is that the mark MAERSK forms essential feature of the plaintiff No.1 corporate name and the corporate name of its subsidiaries. The earliest registrations for MAERSK is in Denmark dated 1955 in Classes 1 to 42. Now, the MAERSK mark is registered in Algerian Angola, Argentina, Australia, Azerbaijan, Bahamas, Bahrain, Bangladesh, Belarus, Bermuda, Bolivia, Brazil, Bulgaria, Burundi, Cambodia, Canada, Chile, China, Colombia, Croatia, Czech Republic, Democratic Republic of Congo, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, European Community, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Guatemala, Honduras, Hong Kong, Iceland, India, Indonesia, Iran, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kazakhstan, Kenya, Kuwait, Latvia, Lebanon, Liberia, Libya, Liechtenstein, Macau, Madagascar, Madrid Protocol, Malawi, Malaya, Malaysia, Mauritius, Mexico, Moldova, Monaco, Montenegro, Morocco, Mozambique, Namibia, Nepal, New Zealand, Nicaragua, Nigeria, Norway, Oman, Pakistan, Panama, Paraguay, Peru, Philippines, Portugal, Puerto Rico, Qatar, Republic of Korea, Russian Federation, Rwanda, Sabah, Sarawak, Saudi Arabia, Serbia, Sierra Leone, Singapore, Slovenia, South Africa, Sri Lanka, Sudan, Suriname, Sweden, Switzerland, Taiwan, Tanganyika, Trinidad & Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, Uruguay, USA, Venezuela, Vietnam, Zambia, Zanzibar and Zimbabwe.
4. In India, the plaintiff No.1 started its operations in the year 1989 when it established the plaintiff No.2 and also had MAERSK registered in Class 12. In 2003, the plaintiff No.1 received registration for MAERSK in Class 39. By virtue of these registrations the plaintiff No.1 has a right to obtain relief in respect of infringement of the said trademark MAERSK.
5. Under Section 29 (4) of the Act, a registered trademark is infringed by a person, who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is :
a. identical with or similar to the registered trademark; and
b. used in relation to goods or services which are not similar to those which the trademark is registered; and
c. the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
6. The trademark being used by the defendant is identical to plaintiffs’trademark MAERSK. The plaintiffs’trademark MAERSK has a reputation in India and can be stated
