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2012 Supreme(Del) 2715
DELHI HIGH COURT
Manmohan Singh, J.
A.P.Moller Maersk A/S & Anr. - Appellant
Versus
Maersk Mining and Exploration Private Limited - Resopndent
CS (OS) No.1787of 2012
Decided On : 01-06-2012
For the Appellant : Mrs. Anuradha Salhotra, Adv. with Mr. Sumit Wadhwa, Adv.
The main legal point established is that a well-known trademark can be protected from infringement, and the court may grant an interim injunction if the adoption of the mark by the defendant is found to be dishonest.
Headnote:
Section 151 CPC - Exemption from filing original documents - Trade Marks Act, 1999 - Section 29(4) - Well-known trademark - Infringement of trademark - Interim injunction - Balance of convenience
Fact of the Case:
Plaintiffs sought exemption from filing original documents under Section 151 of CPC and an injunction against the defendant from using the word MAERSK as part of its corporate name and service mark under Section 29(4) of the Trade Marks Act, 1999.
Finding of the Court:
The court allowed the exemption and granted an interim injunction in favor of the plaintiffs, restraining the defendant from using the word MAERSK as part of its corporate name and service mark.
Issues: Exemption from filing original documents, infringement of trademark, well-known trademark, interim injunction, and balance of convenience.
Ratio Decidendi: The court found that the plaintiffs had a well-known trademark and that the adoption of the mark by the defendant was not honest, leading to a strong case for granting an interim injunction. The balance of convenience also favored the plaintiffs, as allowing the defendant to use the mark would cause irreparable loss to the plaintiffs' business.
Final Decision: The defendant was restrained from using the word MAERSK as part of its corporate name and service mark, and was granted three weeks to change or amend 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 plaintiff’s trademark MAERSK. The plaintiff’s trademark MAERSK has a reputation in India and can be stated to be a well-kno
