Mere Registration but no use cannot be a ground for seeking injunction, says Karnataka High Court!
In an appeal filed by the instant delivery app, Blinkit, the Karnataka High Court (“KHC”) has set aside the order given by the Trial Court wherein the Appellant was, prima facie, found to be infringing the mark “BLINKHIT” owned by the Respondent.
Facts:
- The Respondent had instituted infringement proceedings against the Appellant on the grounds that the Respondent is the registered proprietor of the marks, “BLINKHIT” and “iBLINKHIT”. It was also claimed by the Respondent that it has been using the marks since 2016.
- The Respondent was successful in gaining a favorable order from the Trial Court and the Appellant was injuncted from using its mark “BLINKIT”.
- Aggrieved by this, the Appellant filed the appeal before the KHC.
Plaintiff’s Contentions:
- The Respondent cannot squat on the mark without any intention to use it.
- The nature of business carried on by both the parties was completely different.
- The Trial Court failed to notice that both the conflicting marks were phonetically visually, structurally, and conceptually different.
Decision:
- The KHC rejected the Trial Court’s reasoning that the Respondent has gained registration of the mark prior to filing the suit and hence can seek injunction against the Appellant’s use of mark. The Court relied on the Supreme Court decision in S. Syed Mohideen vs. P. Sulochana Bai. The Supreme Court, through this judgement, made clear that registration does not create any right but merely recognizes it.
- KHC observed that mere registration cannot be made the basis to conclude that the Respondent had made out a prima facie case for grant of temporary injunction. Special attention was given to the fact that there has been no use of the Respondent’s mark since 2016 as was evident from its profit and loss account statement and balance sheet. Accordingly, the appeal was allowed.
Takeaway from the judgement!
It is clear from this judgement that mere registration of a mark does not grant the proprietor all of its statutory rights. The rights conferred by the registration can only be exercised when there is bona fide use of the mark.
