Dishonest Adoption of Somebody Else’s Trademark is to be Discouraged: Delhi High Court in Trademark Infringement Case Involving ‘TIGER’ Brand

The Delhi High Court, in a significant ruling on trademark infringement, granted a preliminary injunction in favor of the plaintiff, Mr. Sanjay Arora, restraining the defendant, Jasmer, from using the ‘TIGER’ mark. Justice Anish Dayal emphasized that the dishonest adoption of trademarks, especially by former employees, undermines the legal protections afforded to established marks.

The judgment addressed key issues surrounding trademark infringement, dishonest adoption, and the significance of documentary evidence in establishing prior use of a trademark. The Court relied heavily on invoices, copyright registrations, and video evidence to substantiate the plaintiff’s claim of prior use and registration of the ‘TIGER’ trademark.

Mr. Sanjay Arora, the plaintiff, had been using the ‘TIGER’ mark for agricultural pipes since June 2003, evidenced by invoices and a surveillance video from 2014. Despite this, the defendant, a former employee, filed for trademark registration in 2017 on a ‘proposed to be used’ basis and admitted to copying the mark post-employment. The dispute centered on whether the defendant’s adoption of the ‘TIGER’ mark constituted infringement and passing off, considering his previous employment and awareness of the plaintiff’s use of the mark.

Prior Use and Registration: The court noted that the plaintiff substantiated his claim of prior usage dating back to 2003 through documentary evidence and registrations. The defendant’s later applications for trademark registration were deemed less credible.

Evidence of Dishonesty: Justice Dayal pointed out the defendant’s contradictory statements and the timing of his trademark applications as indicative of dishonest intentions, especially given his prior knowledge and employment history with the plaintiff.

Legal Precedents: The judgment referenced several cases, including Ishi Khosla v. Anil Aggarwal and Copenhagen Hospitality and Retails v. A.R. Impex, to emphasize the courts’ stance against dishonest adoption of trademarks by individuals with inside knowledge of the prior user’s business operations.

The Court granted a preliminary injunction favoring the plaintiff, preventing the defendant from using the ‘TIGER’ mark or any deceptively similar marks. The defendant was ordered to withdraw all current uses of the mark within three weeks.

Date of Decision: April 24, 2024

MR SANJAY ARORA v. JASMER