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IN THE HIGH COURT OF DELHI
Sanjeev Narula, J.
Shamrock Geoscience Ltd. - Appellant
Versus
Kaba Infratech Private Limited - Respondent
CS(COMM) 308 of 2021 & I.As. 7758 of 2021, 8216 of 2021, 15794 of 2021, 1234 of 2022, 3215 of 2022, 6323 of 2022 and CS(COMM) 324 of 2021 & I.As. 3219 of 2022, 6324 of 2022
Decided On : 06-10-2022
TRADEMARK - INFRINGEMENT AND PASSING OFF - SUIT FOR INJUNCTION - COMMON LAW RIGHTS - REGISTRATION OF TRADEMARK - VALIDITY - PRIOR USE - BALANCE OF CONVENIENCE - IRREPARABLE LOSS - INJUNCTION GRANTED IN FAVOUR OF PLAINTIFF.
Fact of the Case:
Plaintiff, Shamrock Geoscience Ltd., filed a suit for infringement of trademark and passing off against Defendant, Timab NL BV, alleging that Defendant was using the impugned mark `GeoCrete' in India without authorization and in violation of Plaintiff's rights. Defendant contended that it was the prior user of the impugned mark and had obtained registration of the mark in various jurisdictions, including India. Defendant also raised a dispute regarding the validity of Plaintiff's trademark registration.
Finding of the Court:
The Court held that Plaintiff's registration of the impugned mark was prima facie evidence of ownership, but Defendant had raised a substantial dispute regarding the validity of the registration. The Court also found that Defendant had established a prima facie case of prior use of the impugned mark in India, and that the balance of convenience and irreparable loss lay in Defendant's favor. Accordingly, the Court granted an injunction in favor of Defendant, restraining Plaintiff from using the impugned mark during the pendency of the suit.
Issues: 1. Whether Plaintiff had established a prima facie case of infringement of trademark and passing off against Defendant? 2. Whether Defendant had established a prima facie case of prior use of the impugned mark in India? 3. Whether the balance of convenience and irreparable loss lay in Plaintiff's or Defendant's favor?
Ratio Decidendi: 1. The Court held that Plaintiff had not established a prima facie case of infringement of trademark and passing off against Defendant because Plaintiff had failed to demonstrate that it had used the impugned mark in India prior to Defendant. 2. The Court held that Defendant had established a prima facie case of prior use of the impugned mark in India because Defendant had produced evidence of use of the mark since 2013-2014, whereas Plaintiff had failed to produce any evidence of use of the mark prior to 2016. 3. The Court held that the balance of convenience and irreparable loss lay in Defendant's favor because Defendant had been using the impugned mark in India for a longer period of time than Plaintiff, and Defendant had a greater reputation and goodwill associated with the mark.
Final Decision: The Court granted an injunction in favor of Defendant, restraining Plaintiff from using the impugned mark during the pendency of the suit.
JUDGMENT
Sanjeev Narula, J.
I.A. 7757/2021 in CS(COMM) 308/2021 & I.A. 8200/2021 in CS(COMM) 324/2021 (u/Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure Code, 1908)
1. This common order shall dispose of the above-captioned interlocutory applications filed in cross-suits - both seeking, inter alia, injunction against each other from use, passing-off, unfair competition, dilution and blurring of the mark `GeoCrete' [hereinafter, "impugned mark"] - over which, both parties claim proprietary rights and utilise it in respect of identical goods viz. cement additives and soil stabilisation preparations used in construction of roads, highways, pavements, reservoirs etc.
PARTIES
2. For the sake of convenience, parties to the present suits are depicted as follows:
| In CS (COMM.) 308/2021 | |
| PLAINTIFFS | DEFENDANTS |
| Shamrock Geoscience Ltd. [Plaintiff No. 1] | Kaba Infratech Pvt. Ltd. [Defendant No. 1] |
| Mr. Andreas Korytowski [Plaintiff No. 2] | Timab NL BV [Defendant No. 2] |
| In CS (COMM.) 324/2021 | |
| PLAINTIFFS | DEFENDANTS |
| Timab NL BV [Plaintiff] | Shamrock Geoscience Ltd. [Defendant No. 1] |
| Mr. Andreas Korytowski [Defendant No. 2] |
3. In addition to the above, in pleadings and during the course of arguments, reference has also been made to certain inter-related entities, which are not parties to the suit. The inter-se relationship between such entities and parties to the dispute, is explained in the following table:
| S.No. | Name of the Entity | Relationship with Parties to the suit | |
| SHAMROCK & Companies of Mr. Andreas Korytowski | |||
| 1. | Shamrock Geoscience Ltd. | 100% owned by Mr. Andreas Korytowski | |
| 2. | GeoConCept GmbH [hereinafter | "GCC"] | Mr. Andreas Korytowski's first company |
| 3,. SoilTech GmbH [hereinafter | "SoilTech"] | Mr. Andreas Korytowski's second company | |
| TIMAB & Companies | |||
| 1. | Van Mannekus & Co. BV [hereinafter | "Van Mannekus"] | Predecessor-in-interest of Timab NL BV Limited |
| 2. | GeoCrete BV [hereinafter | "GCBV"] | Sister Concern of Van Mannekus |
| 3. | Timab NL BV | Successor-in-interest of Van Mannekus | |
| 4. | Kaba Infratech Pvt. Ltd. [hereinafter | "Kaba"] | Authorised user of the mark `GeoCrete' in India for Timab NL BV |
4. As can be seen from the above, since there are several entities which shall be referred to in the judgement, in order to make it a convenient read, the two main contesting groups/parties viz. Shamrock Geoscience Ltd., its sister concerns, subsidiaries, and Mr. Andreas Korytowski's companies shall be hereinafter collectively referred to as "SHAMROCK"; and whereas, Timab NL BV, Kaba, its predecessors-in-interest, sister concerns and subsidiaries shall be hereinafter collectively referred to as "TIMAB".
CONTENTIONS OF THE PARTIES
On Behalf of Shamrock
5. Mr. Sagar Chandra, counsel for SHAMROCK, has contended as follows:
5.1. The use of the impugned mark by TIMAB is illegal and violates SHAMROCK's rights, since Van Mannekus and GCBV are the erstwhile licensees of SHAMROCK. All arrangements for the production/sale of GeoCrete products were terminated by Mr. Korytowski in 2008, and all manufacturing operations ceased in 2010. The `License and Know-How Agreement' dated 31st January, 2002 categorically states that GCC (owned by Mr. Korytowski) is the sole owner and authorised disposer of the contractual products viz. `GeoCrete ST' and `GeoCrete IM'. Further, GCBV was no longer authorised to use GeoCrete brand after termination of the Supply Contract dated 18th July, 2007 (entered into between SoilTech and GCC with GCBV).
5.2. In CS (COMM.) 324/2021, TIMAB has averred that, "Plaintiff's predecessor Van Mannekus & Co. BV and the Defendant No. 2 had professional and business relationships wherein Defendant No. 2's companies acted as commission agents and brought prospective projects for deployment of the GeoCrete Soil Stabilisation technology owned by Van Mannekus";1 however, in its reply to an interim application filed by SHAMROCK, TIMAB has admitted that the know-how of GeoCrete belonged to Mr. Korytowski's company upon payment of licence fee by GCBV.2 S
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
The central legal point established in the judgment is the significance of prior use and the principles of honest adoption, delay, and acquiescence in trademark disputes.
The main legal point established in the judgment is that the rights of a registered proprietor, who acquired registration for a mark planned for future utilisation, cannot be nullified by someone who....
Registered trademark owners have exclusive rights, but concurrent users may claim based on prior use and non-acquiescence.
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
Important Point :The use of a trademark that is phonetically and visually similar to a registered trademark can lead to confusion, constituting infringement, especially when dishonest conduct is evid....
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