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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Bolt Technology OU - Appellant
Versus
Ujoy Technology Private Limited - Respondent
CS(COMM) 582 of 2022 & I.A. 13529 of 2022
Decided On : 23-11-2022
The court examined the principles of trademark infringement and passing off, highlighting the importance of trans-border reputation and likelihood of confusion in cases involving similar marks.
Headnote:(A) Trade Marks Act, 1999 - Sections related to passing off and infringement - Plaintiff sought permanent injunction against Defendants for using the identical trademark `BOLT`, alleging infringement and passing off - Defendant's proposal to modify mark to `BOLT.EARTH` contested by Plaintiff, who maintains the modification emphasizes `BOLT`. (Paras 2, 4, 10)
(B) Legal Principles - The court examines the elements of passing off, including trans-border reputation and the likelihood of confusion resulting from similar trademarks. (Paras 7, 8)
Facts of the case:
Plaintiff filed a suit against the Defendant prohibiting them from using the mark `BOLT` for their EV charging stations, claiming a global reputation in a similar business. Settlement discussions failed, leading to the need for an interim injunction based on the merits of the application.
Findings of Court:
Court acknowledges Defendant's willingness to adjust their trademark to `BOLT.EARTH` but finds further hearings necessary to fully address the merits of the arguments presented.
Issues: The court primarily evaluates the legitimacy of the Plaintiff's trademark claim and the Defendants' potential infringement.
Ratio Decidendi: The court recognizes the necessity of detailed hearings to determine the validity of the Plaintiff's claims against the Defendant's operations under the current mark.
Result: Further hearings scheduled with interim measures in place.
| Table of Content |
|---|
| 1. plaintiff seeks injunction for trademark protection. (Para 2 , 3) |
| 2. debate over trademark modifications and reputation. (Para 4 , 5 , 6 , 7) |
| 3. court analysis regarding interim injunction. (Para 8 , 9 , 10 , 11) |
| 4. scheduled future hearing dates. (Para 12 , 13) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff- Bolt Technologies OU against the Defendants seeking permanent injunction restraining passing off of trade marks, infringement of copyright, rendition of accounts, damages, and other reliefs. The Plaintiff seeks protection of its rights in the mark `BOLT'. It is the case of the Plaintiff that the Defendants are using the identical mark `BOLT', along with the logo thereof, in relation to identical business of provision of charging points for EVs. A chart comparing the marks of the parties is as under:
| Plaintiff's mark | Defendants' mark |
| BOLT | BOLT |
 |  |
3. The present suit, was listed on 29th August, 2022. After considering the background facts this Court thought it appropriate to refer the matter to mediation, owing to the fact that the Defendants had set up a large number of electric charging stations across the country by then. Parties attempted to negotiate the settlement and various proposals were discussed between them, however, it appears that they could not arrive at a consensus.
4. Mr. Lall, ld. Senior Counsel for the Defendants submits that the Defendant are willing to modify their mark to `BOLT.EARTH' represented in the following logo form:
5. Ms. Swathi Sukumar, ld. Counsel appearing on behalf of the Plaintiff, however, submits that the logo proposed by the Defendants today is not acceptable to the Plaintiff as the use of the `.(Dot)' gives undue emphasis on the mark BOLT. She further submits that the Plaintiff has a global reputation in almost identical business and services and that the Defendant ought not to be permitted to violate the Plaintiff's rights.
6. The Plaintiff's concern, at this stage, is that the Defendants continue to expand under the impugned mark. It is submitted by Ms. Swathi Sukumar, ld. Counsel, that the number of downloads of the Defendants' App have increased from 10,000 to 50,000 during the pendency of the suit. The ld. Counsel further submits that the electric charging stations are also being set up across the country by the Defendants and status quo order may, therefore, be passed.
7. The contention of Mr. Chander M. Lall, ld. Sr. counsel for the Defendants is that the Plaintiff does not enjoy trans-border reputation in India and does not satisfy the tests as laid down in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., AIR 2018 SC 167. He also submits that the Defendant is one of the most successful start-ups in the country and there can be no monopoly granted to the Plaintiff on the word BOLT. This contention is refuted by Ms. Sukumar on the ground that the Defendant itself has sought trade mark protection and hence cannot raise such an argument.
8. Considering that the settlement has not fructified, the interim injunction application would have to be adjudicated on merits. Considering the stand of the rival parties, detailed hearing would be required in the injunction application. Keeping in mind the Board of this Court today, time is insufficient to conclude a full hearing.
9. However, since the Defendants are willing to modify their mark as extracted above, it is directed that without prejudice to the rights and contentions of both the parties, the Defendants' further expansion henceforth shall be by using the mark as suggested today.
10. The earlier standalone mark `BOLT' and the logo used by the Defendants earlier as set out in paragraph 2 above shall henceforth not be used.
11. The Plaintiff however objects to the new logo and submits that the `.DOT' ought not to be used and the mark ought to be `BOLT EARTH' where the words BOLT and EA
