Delhi High Court Upholds Scrum Alliance’s Trademark Rights; Injunction Granted Against “Certified Scrum Master” Use by Defendants

In a significant ruling on trademark infringement, the Delhi High Court has upheld the rights of Scrum Alliance Inc., a U.S.-based certification organization, against the unauthorized use of its trademarks. The Court has granted an interlocutory injunction, restraining Mr. Prem Kumar S. And others from using the marks “CERTIFIED SCRUM MASTER” and an associated logo, which were found to be infringing upon Scrum Alliance’s registered Certification Trade Marks (CTMs).

Justice C. Hari Shankar, in his judgment, observed that the defendants’ use of deceptively similar marks constituted infringement of Scrum Alliance’s registered trademarks, stating, “The impugned marks ‘CSM’, ‘Certified Scrum Master’ and associated logo are similar – and, in the case of the mark CSM, identical – to the plaintiff’s registered CTMs.” He further added that “The defendants are clearly using the impugned marks as trademarks, as they are intended to indicate a connection in the course of trade between the services provided by the defendants and the impugned marks themselves.”

The Court, however, did not grant an injunction against the use of the word mark “CSM” by the defendants, as it is registered under the Trade Marks Act.

This decision marks a crucial precedent in the field of intellectual property law, especially concerning the software industry’s agile methodologies. Scrum Alliance Inc. Claims to be the largest and most influential Scrum certification organization globally, with significant presence in India. The judgment underscores the importance of protecting registered trademarks against potential infringement and confusion in the market.

The Court also addressed the validity of Scrum Alliance’s trademark registrations, observing that the plaintiff’s marks “CERTIFIED SCRUMMASTER”/”CSM” are prima facie valid, with registration being prima facie evidence of validity under Section 31(1) of the Trade Marks Act.

The matter is listed for further proceedings before the learned Joint Registrar (Judicial) on 15 December 2023. This ruling is expected to have far-reaching implications in the realm of certification and trademark rights, particularly for entities operating in multiple jurisdictions.

Date of Decision: 21 November 2023

SCRUM ALLIANCE, INC VS MR. PREM KUMAR S. & ORS.