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2023 Supreme(Del) 1060
IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Bolt Technology Ou – Appellant
Versus
Ujoy Technology Private Limited & Anr. – Respondents
CS(COMM) 582 of 2022 & I.A. 13529 of 2022
Decided On : 24-02-2023
Ms.Swathi Sukumar, Mr. Essenese Obhan, Ms.Ayesha Guhathakurta, Mr.Pratyush Rao, Advocates, for the Plaintiff.
Mr. Chander Lall, Senior Advocate with Mr.Naman Maheshwari, Mr.Garv Malhotra, Mr.Maneesh Malhotra, Ms.Snehal Maheshwari, Ms.Ananya Chug, Mr.Eshan A. Chaturvedi, Advocates, for the Defendants.
Headnote:(A) Trade Marks Act, 1999 - Sections 2(1)(zg), 11(6), 11(9) - Passing off action - The plaintiff, lacking a registered mark in India, claimed passing off against the defendant's use of an impugned mark, alleging deceptive association with their brand 'BOLT' associated with taxi services and EV charging stations - The court emphasized that establishing trans-border reputation is vital, citing previous judgments, and found insufficient evidence of such reputation in India for EV charging services specifically - The court ruled that the defendant had established priority in the Indian EV charging market and dismissed the injunction application. (Paras 1-2, 4, 37.1-38)
| Table of Content |
|---|
| 1. establishment of goodwill by the plaintiff. (Para 1 , 2) |
| 2. nature of claim as passing off, not trademark infringement. (Para 3 , 4 , 5) |
| 3. evidence of international presence and marketing strategies. (Para 6 , 7 , 8 , 9 , 10 , 11) |
| 4. arguments presented by the defendant against trans-border reputation. (Para 12 , 13 , 14 , 15 , 16) |
| 5. counterarguments made by the defendant elaborating their market position. (Para 17 , 18 , 19 , 20 , 21 , 22 , 23 , 24 , 25) |
| 6. defendant's emphasis on lack of confusion and its market leading position. (Para 26 , 27 , 28 , 29 , 30 , 31 , 32) |
| 7. court’s analysis of passing off elements and trans-border reputation. (Para 34 , 35 , 36 , 37) |
| 8. conclusion on dismissing the plaintiff’s application. (Para 38 , 39) |
JUDGMENT
IA 13529/2022 (under Order XXXIX Rules 1 and 2 of the CPC)
The Dispute
1. Formerly known as Taxify OU, the plaintiff was incorporated in 2013 in Estonia as a taxi aggregator, to aggregate all taxies in Tallinn, Estonia, Riga and Latvia on one platform. The plaintiff claims to have conceived and adopted the brand 'BOLT' in 2018, and that the expression signified speed as well as electricity. The plaintiff further avers that, under the brands 'BOLT' and [IMG], the plaintiff was providing, worldwide, ride-hailing, food and grocery delivery, rental of cars, e-bikes and scooters and EV (electric vehicle) charging stations/docks. By dint of continuous use, it is asserted that the marks 'BOLT' and [IMG] have amassed considerable goodwill and reputation and have become exclusively associated with the products and services of the plaintiff. The [IMG] mark, it is further asserted, constitutes an 'original artistic work' within the meaning of Section 2(c)1 [(c) "artistic work" means, -
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship] of the Copyright Act, 1957, of which the plaintiff, as the creator, is the owner and right holder.
2. Admittedly, the plaintiff has no trademark registration in India, though it has applied for registration of the trademark Bolt Charge in Class 99 and of the [IMG] device mark in Classes 09, 12, 35, 36, 37 and 39. The said applications are pending, as on date, with the Registrar of Trade Marks.
3. No suit for infringement of trade mark can, therefore, lie at the instance of the plaintiff against anyone in this country, including the defendant. The tort with which the plaintiff charges the defendant is, indeed, not infringement, but passing off. The plaintiff's case is that the defendant, by using the mark [IMG], is passing off its products and services as those of the plaintiff, or deceiving the unwary consumer into believing the existence of an association between the two.
4. Predicated on the said allegation, the plaintiff seeks, by means of the present suit, an injunction against the defendant from using the impugned [IMG] mark. The plaintiff has filed, with the plaint, I.A. 13529/2022 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an interlocutory injunction restraining the defendants and all others acting on their behalf from (i) passing off their goods and services under the impugned 'BOLT' and [IMG] marks as those of the plaintiff in relation to 'all kinds of mobility, delivery, EV charging and all related goods and services and any other services cognate and allied thereto', and (ii) reproducing, imitating or copying the artistic work in the plaintiff's [IMG] logo, pending disposal of the suit.
5. The present judgement disposes of I.A. 13529/2022.
Rival Stands
Submissions of Ms Swathi Sukumar on behalf of plaintiff
6. Arguing for the plaintiff, Ms Swathi Sukumar emphasizes the worldwide goodwill that her client commands which, in her submission, has percolated into this country as well. She submits that the ap
