INSIGNIFICANT INFRINGERS OF TRADE MARKS
To believe that just mere registration of a trade mark would mean a trade mark is common to trade is not a correct understanding and therefore it is important to deal with the subject of trade mark infringers who would not create any harm by use of a simiar trade mark. . Insignificant infringers of trade marks The Division Bench of this the Hon’ble High Court of Delhi in Pankaj Goel v. Dabur India Ltd. has been clear on this point which reads as under:
―21. 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 business. The Supreme Court in National Bell v. Metal Goods , has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. , it has been held as under:—
… 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 in taking 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 fact, in Dr. Reddy Laboratories v. Reddy Paharmaceuticals, a Single Judge of the Hon’ble High Court of Delhi has held as under:—
…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 interest and starts misleading and confusing their customers.
The Division Bench of the Hon’ble High Court of Delhi in Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. , has stated thus:
―38. In the case of Panacea Biotec Ltd. v. Recon Ltd8 , the plaintiff was using the trademark ‗NIMULID‘ and had filed a suit for injunction against the defendant for using the mark ‗REMULIDE‘ in relation to the same medicine with the API being ‗NIMESULIDE. This Court held that when the name is derived or coined from the name of the principal ingredient being used in the manufacture of the drug, no distinctiveness or exclusiveness can be claimed by the manufacturer. The said decision is applicable to the facts of this case as well; the mark LETROZ‘ is nothing but a short name of the active ingredient LETROZOLE‘.
Therefore not in all cases would a trade mark infringement case would be entertained if it is seen that there is no significance of such an infringment that would in any way harm the Plaintiff in case of suit.
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