alfred dunhill limited vs kartar singh

8/13/2019 Alfred Dunhill Limited vs Kartar Singh

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Alfred Dunhill Limited vs Kartar Singh Makkar & Ors. on 1 March, 1999

Equivalent citations: 1999 IIAD Delhi 789

Plaintiff: Alfred Dunhill Limited

Defendant: Kartar Singh Makkar & Ors

ISSUE & FACTS

A suit seeking injunction to prevent passing off and rendition of accounts and an application

under Order 39 Rules 1 and 2 C.P.C. for interim injunction was filed by the plaintiff against

the defendant.

The plaintiff is a highly reputed company engaged in the business, inter alia of manufacturing

and marketing a wide variety of goods including ready-made garments and other textile

articles under the trademark 'DUNHILL.

The products of plaintiff are known all over the world and the trademark 'DUNHILL'

belonging to plaintiff company has acquired global reputation. Plaintiff's various products areavailable for sale at the duty free shops and stores of the Indian Armed Services. The plaintiff

is the exclusive owner of certain registrations of the trade mark 'DUNHILL' in India

CONTENTION OF PLAINTIFF/ DEFENDANT

DEFENDANT

The following contention was raised by the defendant:

1. The plaintiff has not used the trade mark DUNHILL in India and so plaintiff has no

right in respect of the said trade mark in this country.

2. Plaintiffs alleged reputation and goodwill of the trade mark DUNHILL stood

extinguished due to the restriction on import of foreign goods in India

3. The defendants have been using the mark DUNHILL since 31.5.1986, and thus there

is an inordinate delay of 11 years in bringing action which is fatal to the present suit.


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4. According to defendants, the user of the mark Dunhill by them does not amount to

passing off.

COUNTER CLAIM/CONTENTIONS OF THE PLAINTIFF

1. The grievance in relates only to action in passing off.

2. It is pleaded in the plaint that the purpose and intent of defendant company in

adopting the word 'DUNHILL' as part of its corporate name is to trade upon and

encash on the name, fame, reputation, image and goodwill acquired by the DUNHILL

group of companies.

3. It is also pleaded that defendant company is passing off its goods as those of plaintiff's

goods with intent to affect the goodwill and reputation of plaintiff.

ISSUE FOR CONSIDERATION AS PER THE PLAINTIFF

1. Whether plaintiff has made out a prima facie case for grant of ad interim injunction.

It has to be borne in mind that prima facie case is not to be confused with prima facie

title, which has to be established on evidence at the trial. To establish a prima facie

case, the party seeking ad interim injunction should show that there is a credible

dispute with respect to a right or title which it seeks to protect and it has a real

prospect of succeeding in its claim at the trial

2. Whether a case of passing off can be made out against the defendant.

3. Whether the plaintiffs plea suffers from delays and latches

CONCEPTS INOLVED:

1. Passing off:

a. Definition

b. Ingredients of passing off

2. Well known trademark

3. Injunctions- Order 39

a. Ad Interim Injunction


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b. Scope for Grant of injunctions

c. Refusal grounds

4. Doctrine of delay and latches and its application to the case in question

EVALUATION OF THE CONCEPTS

India

Section 2 (1) (zg) of Trade Marks Act, 1999 defines a well-known trade mark as " in relation

to any goods or services, means a mark which has become so to the substantial segment

of the public which uses such goods or receives such services that the use of such mark

in relation to other goods or services would be likely to be taken as indicating a

connection in the course of trade or rendering of services between those goods or

services and a person using the mark in relation to the first mentioned goods or

services."

Therefore the ingredients of a well known trademark are:

1. it has to be a mark

2. it should be known to a large segment of public i.e it should be widespread as

awareness

3. there should be a likely hood of association with a said trademark with another

trademark by such segment of public in relation to a different set of goods/ services

There is merit in the argument that international trademarks too can be granted rights at par

with those of national trademarks

In order to further understand the concept and definition of well known marks, we refer to the

definition underArticle 6bis of the Paris Convention as incorporated in various legal

systems.It says that (1) The countries of the Union undertake, ex officio if their legislation

so permits, or at the request of an interested party, to refuse or to cancel the registration, and

to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a

translation, liable to create confusion, of a mark considered by the competent authority of the

country of registration or use to be well known in that country as being already the mark of a


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person entitled to the benefits of this Convention and used for identical or similar goods.

These provisions shall also apply when the essential part of the mark constitutes a

reproduction of any such well-known mark or an imitation liable to create confusion

therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting

the cancellation of such a mark. The countries of the Union may provide for a period within

which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of

marks registered or used in bad faith.1

Under Section 56 of the Trade Marks Act, 1994 of England states1that:

i. the applicant be a member of a Convention country; orii. is domiciled in , or has a real and effective industrial or commercial establishment in,

a convention country,

whether or not that person carries on business, or has any goodwill, in the United Kingdom;

and references to the proprietor of such trade mark are to be construed accordingly.

Defining well-known

There are no particularly helpful definitions of a well-known mark in either Article 6 bis of

the Paris Convention or Article 16 of TRIPs. So the interpretation of whether a trademark can

be considered well known is interpreted on an independent, national scale.

In the case of 4McDonalds Corporation v Joburgers Drive-Inn Restaurants and others

, the South African courts held that the term well known should be tested by reference to

whether sufficient people knew the mark well enough to entitle it to protection against

deception or confusion: a degree of knowledge similar to that protected by the law of

passing off 2

1http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P151_21198

2http://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdf
http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P151_21198http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P151_21198http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P151_21198http://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdfhttp://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdfhttp://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdfhttp://ip-science.thomsonreuters.com/m/pdfs/klnl/8418407/wellknownmarks.pdfhttp://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P151_21198


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In Warnink Vs. Townend & Sons (HULL) Ltd. 1979 A.C. 731, the following five

characteristics which must be represented in order to create a valid cause of action for passing

off:

i) a misrepresentation,

ii) made by a trader in the course of trade,

iii) to prospective customers of his or ultimate customers of goods or services supplied by

him,

iv) which is calculated to injure the business or goodwill of another trader (in the sense that

there is a reasonably foreseeable consequence) and

v) which causes actual damage to a business or goodwill of the trader by whom the action is

brought or (in quia timet action) will probably do so.

In Reckitt & Cdman Products Ltd. Vs. Borden Inc & Ors. (1990 J R.P.C. 341), it was held

that proof of fraudulent intention is not a necessary element in a cause of action for passing

off. The relevance of fraud to this tort is simply that "if the intention to deceive is found, it

will be readily inferred that deception will result."

England

Passingoff is a common law action rather than a statutory cause of action and is used to

prevent one party from using the goodwill associated with another party for their own benefit.

Statutory law such as theUnited KingdomTrade Marks Act 1994provides for enforcement

of registered trademarks through infringement proceedings. 3

Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491. (This case is better

known as the Jif Lemon case.) says that three elements are needed for such claim

goodwill or reputation in the marketplace that distinguishes such goods or services from

competitors;

misrepresention of such goods and services intentionally or unintentionally, leading to

likelyhood of confusion

The claimant may suffer damages because of the misrepresentation.4

3http://en.wikipedia.org/wiki/Passing_off
http://en.wikipedia.org/wiki/United_Kingdomhttp://en.wikipedia.org/wiki/United_Kingdomhttp://en.wikipedia.org/wiki/Trade_Marks_Act_1994http://en.wikipedia.org/wiki/Trade_Marks_Act_1994http://en.wikipedia.org/wiki/Trade_Marks_Act_1994http://en.wikipedia.org/wiki/Passing_offhttp://en.wikipedia.org/wiki/Passing_offhttp://en.wikipedia.org/wiki/Passing_offhttp://en.wikipedia.org/wiki/Passing_offhttp://en.wikipedia.org/wiki/Trade_Marks_Act_1994http://en.wikipedia.org/wiki/United_Kingdom


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USA

Trademarks are governed by both state and federal law. Originally, state common law

provided the main source of protection for trademarks. However, in the late 1800s, the U.S.

Congress enacted the first federal trademark law. Since then, federal trademark law has

consistently expanded, taking over much of the ground initially covered by state common

law. The main federal statute is the Lanham Act, which was enacted in 1946 and most

recently amended in 1996.15 U.S.C. 1051, et seq.. Today, federal law provides the

main, and by and large the most extensive, source of trademark protection, although state

common law actions are still available. Most of the discussion in this summary focuses on

federal law.5

Conclusion and recommendation

Therefore though there might have been delay in filling for registration however if it can be

proved that that the plaintiff has followed the due procedure as per law (as said in the mbd6

case); has not abandoned the use of his trade mark and also that the defendant is trying to take

advantage through the use of such mark then relief may be granted to the plaintiff. It is of

utmost importance that a prima facia case for grant of injunction be established by the

plaintiff showing that that balance of power is in his favour.

Recommendation(s)

It is recommended that the plaintiff must take care to keep himself updated with any

development that takes place with his trademarks. They should not adopt a laid back attitude

with respect to registration and re registration as failure to file in time leads to the above

complications in the first place.

4http://www.tannerdewitt.com/media/publications/passing-off.php

5http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#2

6MIPR 2013 (1) 246 held that expired registration can be renewed after 26 yrs also
http://www4.law.cornell.edu/uscode/15/1051.htmlhttp://www4.law.cornell.edu/uscode/15/1051.htmlhttp://www4.law.cornell.edu/uscode/15/1051.htmlhttp://www4.law.cornell.edu/uscode/15/1051.htmlhttp://www4.law.cornell.edu/uscode/15/1051.htmlhttp://www.tannerdewitt.com/media/publications/passing-off.phphttp://www.tannerdewitt.com/media/publications/passing-off.phphttp://www.tannerdewitt.com/media/publications/passing-off.phphttp://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#2http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#2http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#2http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#2http://www.tannerdewitt.com/media/publications/passing-off.phphttp://www4.law.cornell.edu/uscode/15/1051.html

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