The issue of the maintainability of an infringement suit based solely on the filing of a trademark application by the defendant is a nuanced legal question. This article delves into the matter, drawing insights from a case before the Bombay High Court involving the trademark 'BOROPLAST.'

Facts of the Case:
The plaintiff, having used the trademark 'BOROPLAST' since 2000 in various categories, filed a suit against the defendant upon discovering the latter's trademark application for 'BOROPLAST.' Notably, the defendant had not yet introduced any vendible articles into the market under this mark.

Legal Basis for the Suit:
The crux of the plaintiff's argument rested on the maintainability of an infringement suit when a defendant has merely applied for trademark registration, without any tangible products in the market. Citing the precedent of Analco (India) Pvt Ltd vs Navodya Exim Pvt Ltd, the plaintiff contended that such a suit is indeed maintainable.

Precedent and Legal Position:
The mentioned case, decided on January 23, 2014, established a precedent supporting the plaintiff's claim. The court in Analco held that the filing of a trademark application itself could be sufficient grounds for maintaining an infringement suit. This decision reflects a broad interpretation of trademark rights, extending protection even before the actual use of the mark in commerce.

Court's Observations and Decision:
In the BOROPLAST case, the Bombay High Court granted an ex parte injunction in favor of the plaintiff. The court found that the defendant had blatantly imitated the 'BOROPLAST' trademark by applying for an identical mark, thereby infringing on the plaintiff's registered trademark. This decision underscores the court's willingness to afford protection based on the mere filing of a trademark application.

The concluding Note:
The maintainability of an infringement suit based on a defendant's trademark application, even in the absence of actual market presence, is a legal terrain where precedent plays a pivotal role. The BOROPLAST case, aligning with Analco, highlights a proactiveness by the judiciary in safeguarding trademark rights. This legal stance serves to deter potential infringers and underscores the importance of early intervention to protect intellectual property.

The Case Law Discussed:
Case Title: Aditya Borkar Vs Sachin Ganesh
Date of Judgement/Order:28/11/2023
Case No. COM IPR SUIT (L) NO.31504 OF 2023
Neutral Citation No:2023:Mad:5222
Name of Hon'ble Court: Bombay High Court
Name of Hon'ble Judge: R.I.Chagla, HJ

Disclaimer:
Ideas, thoughts, views, informations, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539