When ever a Plaintiff institute a Suit for infringement of Passing off against the Defendant, then normally the Defendant takes the defense of user of same or similar trade mark by other parties. The defendant advance the argument that various parties are using the trademark of the plaintiff, how ever the plaintiff is not taking any action against the third parties. Hence the inaction on the part of Plaintiff against third parties also entitle the defendant to use the infringing trademark. So the question arises, in case the plaintiff is not taking action against the third parties/infringers, does this fact dis-entitle the plaintiff from obtaining the injunction against the defendant. What would be effect of such defense. This article deals with these defenses of the defendants.

This question was dealt with by the Hon’ble Supreme Court of India in National Bell Co. & Anr vs Metal Goods Mfg. Co. (P) Ltd 1971 AIR 898, 1971 SCR (1) 70,where by the defendant took the defence that the subject matter trademark of the plaintiff is being used by various third parties and that the same is common to trade. The Hon’ble Supreme Court of India discussed this issue and answered the same in this manner: “This evidence negatives any abandonment of trade marks or letting infringements go unchallenged or misleading the other manufacturers that the respondent company would not interfere it they were to use the same marks. Rights in a mark can, of course, be abandoned by its owner but so long as he remains the registered proprietor of the mark and carried on the business to which the mark is attached, a plea of abandonment is difficult to sustain. It would, however, be a different matter if it is shown that there, were repeated, undisturbed infringements.

The evidence in the present case does not show that there were repeated breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them. (see Re. Farina(1) Where neglect to challenge infringements is alleged, the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect. [see Rowland v. Mitchell(2) ]. The plea of common use must fail, for, to establish it the use by other persons should be substantial.”

In Coolways India Vs. Princo Air Conditioning and Refrigeration, PTC (Suppl) (1) 470 (Del):1993 (1) Arb.LR 401:the defendant took this defense that a plaintiff himself using usurping or infringing a third party's registered trade mark is debarred from claiming the relief of injunction. The Hon’ble High Court of Delhi has dealt with this issue and laid down the law in this manner ,“What has to be seen is whether the plaintiff has acquired a reputation, goodwill in a mark which he is using in trading his goods uninterruptedly for quite some time and somebody else is attempting to pass off his goods under that mark. The contention that a plaintiff himself using usurping or infringing a third party's registered trade mark is debarred from claiming the relief of injunction, in my in view, is a merit less plea. This a matter between the plaintiff and the party in whose favor trade mark is registered. Only he can object to it. It is not for a third person to take up issue for him and claim protection on that score. It is not disputed by the defendant that no action for infringement of trade markhas been initiated against the plaintiff by any of the parties, in whose name the said trade mark is claimed as registered. There is no reason why a person, competing in trade, is allowed to make use the reputation and goodwill of another person by attaching to his product a name or description with which he has no natural association”.

In P.M. Diesels Ltd. Vs. S.M. Diesels, 1993- PTC-75case, the defendant took the defense that the subject matter trademark is being used by various parties and that the plaintiff is not taking action against such infringers. Hence the plaintiff has abandoned right in the subject matter trade mark. This issue has been dealt with by the Hon’ble Court as ,“Next contention raised by learned counsel for the defendant is that the word Marshal has become common to the trade of diesel engines in Rajkot and various other persons are using the trade mark in one form or other as inasmuch as some are using Air marshal, Perfect Marshal, Power marshal etc. and the defendant is not the only person who is using the trade mark Sona marshal only. The plaintiff, therefore, cannot claim its trade mark to be distinctive of its goods or business and no customer is likely to be confused or deceived on account of this trade mark. This contention of the learned counsel for the defendant is also without force. In this connection it is sufficient to say that under the law it is the right of two parties before the court which has to be determined and the court has not to examine the right of other parties. If some other manufacturers are using or suffixing the word Marshal on their diesel engines, it is of no consequence. Furthermore, if the plaintiff has not taken any action against several other infringements, this does not mean that the plaintiff has abandoned its trade mark and cannot challenge the action of the defendant.”

InEssel Packaging Ltd. Sridhar Narra & Anr. 2002(25) PTC 233 (Del)case, the Hon’ble Delhi High Court dealt with the issue of the defendant regarding the third parties user and answered this question in this way,“Merely because some other parties or persons are using the name ESSEL does not provide a justification to the defendants for using the said name as the plaintiff has been using this name much prior to the adoption of this name by the defendants and itswidespread use of this name shows that this word has become synonymous with the business of the plaintiff and its group companies.”

In Express Bottlers Services Pvt. Ltd. vs. Pepsi Inc. & Ors.,1989 (7) PTC 14case, the issue of inaction on the part of the plaintiff against the other infringers came, which was dealt with by the Court in the following manner: “To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay intaking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This court is inclined to accept the submissions of the respondent no. 1 on this point... The respondent no. 1 did not lose its mark by not proceeding against insignificant infringers.”

In Pankaj Goel vs. Dabur India Ltd., 2008(38) PTC 49 (Del) the case, similar question came before the Division Bench of Hon’ble High Court of Delhi, where in the Hon’ble Division Bench reasserted the same principle, which is as follow: “As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the appellant has not been able to prima facie prove that the said infringers 'had significant business turnover or they posed a threat to plaintiff's distinctiveness. In fact, we are of the view that the respondent/plaintiff is not expected to sue all small type infringers who may not be affecting respondent/plaintiff's business. The Supreme Court in National Bell vs. Metal Goods, AIR 1971 SC 898hasheldthat a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness.”

In Anjani Kumar Goenka and Anr. Vs Goenka Institute of Education and Research: AIR2008Delhi1992, 2008(2)ALD(Cri)547, (2009)ILR 3Delhi758, 2009(39)PTC720(Del)in Para No. 65 of the said Judgment , the Hon’ble High Court of Delhi observed that As a settled principle of law, unauthorized or un consented use by other party is no defense.

In Dr. Reddy'S Laboratories Ltd. vs Reddy Pharmaceuticals Limited: 2005 128 Comp Case 42 Delhi, 2004 (76) DRJ 616, 2004 (29) PTC 435 Del,the Hon’ble High Court of Delhi reiterated the same principle that owner of a trademark or copyright is not required to run after every infringers.

The relevant portion of the said Judgment is being reproduced as here in below:
"The owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.”

In P Rakash R Oadline Ltd. V S. P Rakash P Arcel S Ervice (P) ltd. 48 (1992) DLT 390: 1992 (22) DRJ 489rejected the contention of the Defendant therein that “there were others in the market with similar name whom the Plaintiff had chosen not to sue by holding that the other parties may not be affecting the business of the Plaintiff. They may be small time operators who really do not matter to the Plaintiff. Therefore, the Plaintiff may not choose to take any action against them. The Court further held that the mere fact that the Plaintiff has not chosen to take any action against such other parties cannot dis entitle the Plaintiff from taking the present action.”

In 2014 (59) PTC 256 (Del) Indian Hotels Company Limited Versus Ashwajeet Garg, the Hon’ble High Court of Delhi has laid down the following principle: “Mere fact that the Plaintiff has not chosen to take any action against other parties cannot disentitle the Plaintiff from taking the present action. The other parties may not be affecting the business of the Plaintiff. They may be small time operators who really do not matter to the Plaintiff. Therefore, the Plaintiff may choose not to take any action against them.”

In 2008 (37) PTC 468 (Del) (DB), Indian Hotels Company Limited Versus Jiva Institute of Vedic Science case, the Hon’ble High Court of Delhi observed “It was also contended by Mr. Rohtagi that since other parties were also making use of the trade mark Jiva the plaintiff was not entitled to the injunction prayed for. The decision of this Court in Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr. 2002 (24) PTC 355(Delhi) provides a complete answer to that submission. The court was in that case also dealing with a similar argument against the issue of an injunction which was repelled, holding that the use of the trade mark by some other party against whom the plaintiffs have not proceeded immediately for seeking an injunction would not dis-entitle him from seeking an injunction against another party who was similarly committing a violation.”

In 1998 PTC (18) 698, Indan Shaving Product Limited Vs Gift Product, the Hon’ble High Court of Delhi dealt with the contention of the defendant as under: “It was next argued by the learned counsel for the defendant that the said trade mark Ultra is being used by several other persons/companies besides the defendants such as Toshiba, National and Sony. Thus the same has become publici juris and the plaintiffs can not claim any exclusive right therein. Admittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence the said defense, that other persons are also using the said trade mark, is not available to the defendants. The Court is called upon to decide disputes in between the parties which are before it. The Court cannot be expected to adjudicate upon a dispute which is not before it. A matter very much akin to the matter in hand came up before a single Judge of this Court.”

In Amrit Soap Company Vs. New Punjab Soap Factory, 1989(2) Arbitration Law Reporter 242, the Hon’ble High Court of Delhi answered this aspect in this manner, "The allegation that some other manufacturers are also using the same trade mark is of no consequence as the Court is concerned with parties before it only."

In 2016(68)PTC37(Cal), Assam Roofing Ltd. VsJSB Cement LLP, the Hon’ble High Court of Kolkata returned the following finding, “It is a settled legal position that the use of a registered mark or the essential feature thereof by others is not a defense available to the Defendant in an action for infringement and passing off. Merely because the Plaintiff has chosen to sue one infringer first and has not at such time sued others for infringement is also no defence in an action for infringement and passing off and it is settled law that it is the prerogative of the Plaintiff/registered proprietor/owner of a mark whom to sue so as to protect its rights.”

After going through all the afore mentioned different Judgments as laid down by the Hon’ble Supreme Court of India and Hon’ble High Court , the principle which emerges is that use of the trademark of the plaintiff by the third parties , is no defense in an action for infringement of trademark and passing off. The plaintiff is not required to run after every infringers. In action on the part of the plaintiff in taking action against other infringers, does not entitle the defendants to use the trademark of the plaintiff. What the court is required to see, is the list between the contesting parties. The Court has to see the respective rights and user of the contesting parties. The court is not required to see the rights of the third parties. The plaintiff’s inaction against other infringers does not mean abandonment of the trade mark. The plaintiff can wait . till it feels that third party user is damaging its right. The defendant can not say that plaintiff can not allege right in the trademark, as other parties are using the plaintiff’s registered trademark and that plaintiff is not taking any action. This defense of the defendant is of no help.

Mr. Ajay Amitabh Suman,
Advocate, Delhi High Court