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IN THE HIGH COURT OF DELHI AT NEW DELHI
AMIT BANSAL, J.
Broad Peak Investment Holdings Ltd. And Anr. - Plaintiffs
Versus
Broad Peak Capital Advisors Llp And Anr. - Defendants
CS(COMM) 405 of 2024 WITH I.A. 11282 of 2024, I.A. 11283 of 2024, I.A. 11285 of 2024, I.A. 42356 of 2024
Decided on : 20-01-2025
(A) Trade Marks Act, 1999 - Sections 27(2) and 28(3) - Permanent injunction sought for trademark infringement and passing off - Plaintiffs failed to establish prior use and goodwill in India for the mark ‘BROAD PEAK’ - Defendants adopted the mark bona fide and have been using it since 2016 - No prima facie case for injunction established. (Paras 40, 41, 46, 72)
(B) Passing Off - Action based on goodwill and reputation - Plaintiffs must demonstrate prior use and misrepresentation by defendants - Plaintiffs failed to prove substantial goodwill in India, thus no passing off established. (Paras 42, 43, 60, 67)
Facts of the case:
Plaintiffs, investment advisers, claimed trademark rights over ‘BROAD PEAK’, asserting prior use since 2008, while defendants adopted the mark in 2016. Plaintiffs filed for trademark registration in India on a ‘proposed to be used’ basis after defendants. (Paras 10, 39)
Findings of Court:
Plaintiffs did not establish prima facie case for injunction; balance of convenience favored defendants who have used the mark continuously since 2016. (Paras 72, 73)
Issues: Whether plaintiffs have established prior use and goodwill in the mark ‘BROAD PEAK’ in India and whether defendants' use constitutes passing off. (Paras 41, 60)
Ratio Decidendi: Court ruled that the plaintiffs, being aware of the defendants’ use, could not claim prior rights; the defendants' use was bona fide and did not mislead consumers. (Paras 40, 46, 72)
Result: Application for interim injunction dismissed.
JUDGMENT :
AMIT BANSAL, J.
I.A. 11282/2024 (Under Order XXXIX Rules 1 & 2 CPC)
1. By way of the present judgment, I shall decide the captioned application filed on behalf of the plaintiffs under Order 39 Rule 1 and 2 of the Civil Procedural Code, 1908 (CPC).
2. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks of the plaintiffs and passing off their business as that of the plaintiffs and other ancillary reliefs.
3. Summons in the suit and notice in the application were issued on 31st May, 2024.
4. Reply to the interim application was filed on behalf of the defendants on 27th July, 2024 and the rejoinder thereto has also been filed by the plaintiffs on 20th August, 2024. However, no ad interim injunction order was passed in favour of the plaintiffs.
5. Thereafter the matter was listed on various dates and pleadings have been completed in the suit. The application was heard on 21st October, 2024, 6th November, 2024, 26th November, 2024 and 11th November, 2024, when the judgment was reserved.
CASE SET UP IN THE PLAINT
6. Briefly stated, the case set up in the plaint is as follows.
7. The plaintiff no.1 is a company incorporated in the year 2006 under the laws of Cayman Islands. The plaintiff no.2 was incorporated in Singapore in 2006 as a subsidiary of the plaintiff no.1.
8. The plaintiffs are leading investment advisers/managers for several pan-Asia-focused investment funds, which invest principally across equities and credit.
9. The plaintiffs have been using the mark ‘BROAD PEAK’ in their trade names and marketing the same since their incorporation in 2006.
10. The plaintiffs have secured various registrations in respect of ‘BROAD PEAK’ in various jurisdictions across the world, details of which are set out in paragraph no.10 of the plaint. The earliest registrations in Singapore and U.K. date back to 2007.
11. The plaintiffs have also registered a domain name ‘broadpeakinv.com’ on 19th September, 2006, which is used to host the e-mail addresses of the plaintiffs as well as their related entities.
12. The plaintiffs have been providing investment advisory services with respect to their investment holdings and funds in India since 2008 under the trade name/trading style ‘BROAD PEAK’. The plaintiffs have filed various e-mail correspondence with Indian entities with regard to their Indian activities from 2008 as well as accounts statements for their investments in India.
13. The plaintiff no.1 is the registered proprietor of the word mark ‘BROAD PEAK’ in India with effect from 15th February, 2017 in class 36, which is valid and subsisting. The plaintiffs applied for registration of their trademark ‘BROAD PEAK’ in India on a ‘proposed to be used’ basis since the actual use documents of the plaintiffs dating back to 2008 were not traceable. Subsequently, these documents were traced which showed that the plaintiff group has been using the said mark since 2008.
14. In February, 2017, the plaintiff learnt that the defendant no.2 has set up an asset management company under the name ‘Broad Peak Capital Advisors LLP’. Accordingly, the plaintiff issued a legal notice dated 20th February, 2017 to the defendant no.2 apprising him of the plaintiffs’ prior common law rights in the trademark ‘BROAD PEAK’ and calling upon him to cease-and-desist the use of ‘BROAD PEAK’. No response was received by the plaintiffs to the aforesaid notice.
15. Thereafter, sometime in July, 2020, the plaintiffs came to know that the defendant no.2 is continuing to do business using the mark ‘BROADPEAK’ and has also filed two applications for registration of the impugned mark ‘BROAD PEAK’ with the Trade Marks Registry on 15th March, 2017.
16. The Trade Mark Registry, in its examination report dated 8th July, 2017, raised an objection under Section 11(1) of the Trade Marks Act, 1999 (hereinafter ‘Trade Marks Act’) to the defendant no.2’s application by citing the plaintiffs’ prior application for the identi
Plaintiffs failed to prove prior use and goodwill for 'BROAD PEAK' in India, thus no basis for trademark infringement or passing off against defendants who adopted the mark bona fide.
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
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 importance of establishing continuous use of a trademark and the significance of goodwill and reputation in determining passing off and infringement.
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.
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