In some cases , defendant starts using the Transliterated version of Plaintiff's Trademark in another language. In such a situation, does plaintiff have right to restrain the defendant.

What does mean by transliterated version of Plaintiff's trade mark? Let us understand this. Let us assume that Plaintiff's Trademark is HIGH WALL. In such a scenario , if defendant starts using as a trademark , it will be called use of Transliterated version of Plaintiff's Trademark in Hindi language.

Question is this, whether the Plaintiff have any statutory right to restrain the Defendant from using Transliterated version of Plaintiff's Trademark in another language? Section 29 of the Trademarks Act 1999 Act defines as to what does amount to infringement. Let us see Section 29 of the Trademarks Act 1999.

29. Infringement of registered trade marks:

1. A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    
2. A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of:
   
   1. its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
   2. its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
   3. its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
       
3. In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
    
4. A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which:
   
   1. is identical with or similar to the registered trade mark; and
   2. is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
   3. the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
       
5. A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
    
6. For the purposes of this section, a person uses a registered mark, if, in particular, he:
   
   1. affixes it to goods or the packaging thereof;
   2. offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
   3. imports or exports goods under the mark; or
   4. uses the registered trade mark on business papers or in advertising.
       
7. A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.
    
8. A registered trade mark is infringed by any advertising of that trade mark if such advertising:
   
   1. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
   2. is detrimental to its distinctive character; or
   3. is against the reputation of the trade mark.
       
9. Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

If we take a close look at provisions of Section 29 of the Trademarks Act 1999, it emphasizes use of identical or similar Trademarks Act 1999. Besides this , Section 29 of the Trademarks Act 1999 also include unauthorized import, advertising, unfair advantage of and contrary to honest practices in industrial or commercial matters; etc, however there is no specific provision identifying the issue of use of Transliterated version of Trademark by the Defendant. Issue is this , can a plaintiff restrain the Defendant from using Transliterated version of his Trademark?

Answer to this question can be found in Order dated 06.05.2022 passed by Hon'ble High Court of Delhi in Suit bearing CS Comm No.288 of 2022 titled as Pepsico Inc. Vs Jagpin Breweries Limited and Another.

This Suit was filed by the Plaintiff on the basis of proprietary right in the Trademark MIRINDA and user since 1959 abroad and in India since the year 1997 in relation to manufacturing and distributing non-alcoholic beverages, packaged and aerated waters and snack foods. The Plaintiff also claimed to have trademark registration for MIRINDA since the year 1997 in India.

The Plaintiff filed the subject matter suit as they have came across use of Transliterated version of Plaintiff's Trademark MIRINDA in Hindi Language by the Defendants in relation to country made liquor. The Defendants have also filed Transliterated version of Plaintiff's Trademark MIRINDA in Hindi Language under no. 3471413 in Class 33, which was subsequently abandoned.

The Hon'ble High Court Delhi after hearing the argument of the Plaintiff that use of Transliterated version of Plaintiff's Trademark MIRINDA in Hindi Language िरिंडा by the Defendants amounts to infringement of the statutory rights of Plaintiff under Section 29 of the Trade Marks Act, 1999 and also amounts to misrepresentation and is calculated to cause damage to the Plaintiffs' common law rights and amounts to passing off was pleased to grant injunction in favour of the Plaintiff and against the Defendants.

This in this case the Defendants were restrained from using Transliterated version of Plaintiff's Trademark MIRINDA in Hindi Language िरिंडा. This Order of Hon'ble High Court of Delhi paves way for the Plaintiff to assert right in transliterated version of Plaintiff's Trademark MIRINDA in other Language.

Written By: Ajay Amitabh Suman: Advocate, Hon'ble High Court of Delhi
Email: [email protected], Ph no: 9990389539