Prior Use Wins In ‘TIGER’ Trademark Dispute

Background

The lawsuit centers on the claimed violation of the trademark ‘TIGER’ by the Defendant in relation to agricultural pipes. Mr. Sanjay Arora, the Plaintiff, asserted ownership of the ‘TIGER’ trademark, alleging the Defendant’s dishonest adoption of the mark. Following a comprehensive review of evidence and arguments from both sides, the Delhi High Court sided with the Plaintiff, issuing an injunction against the Defendant, prohibiting the use of any mark identical or deceptively similar to the Plaintiff’s registered mark ‘TIGER.’

Facts:

Mr. Sanjay Arora, the proprietor of the ‘TIGER’ trademark, had applied for its registration in classes 17 and 19 on February 6, 2018, claiming user since June 17, 2003. Jasmer, a former employee of the Plaintiff, allegedly applied for a similar trademark registration of ‘TIGER’ on May 25, 2017, on a ‘proposed to be used’ basis under class 19. Subsequently, the Defendant also sought registration for a second mark under class 17 on October 8, 2019. The Plaintiff contended that Defendant’s adoption of the mark was dishonest, citing evidence of his presence in the Plaintiff’s factory alongside ‘TIGER’ branded products.

Issues:

Whether the Plaintiff is entitled to a permanent injunction, restraining the Defendant and its affiliates from using, manufacturing, sale, display, advertising, import, export, or dealing with goods bearing a trademark/device/label identical or deceptively similar to the Plaintiff’s mark.

Arguments Raised:

Plaintiff’s Arguments:

• The Plaintiff, argued that he had been using the ‘TIGER’ mark since 2003 and provided evidence to substantiate his claim.
• He alleged that the Defendant, being a former employee, had inside knowledge of the Plaintiff’s business and knowingly adopted the ‘TIGER’ mark.

Defendant’s Arguments:

• Defendant contested the Plaintiff’s claim of prior use, arguing that the ‘TIGER’ mark was not used until 2018.
• He further claimed that the Plaintiff had copied the mark from him when he applied for trademark registration in 2017.

Judgment:

The Court recognized the significance of prior use in trademark disputes and noted that the evidence presented by the Plaintiff, including invoices and surveillance footage, supported their claim of prior use of the ‘TIGER’ mark. Additionally, the Court found Defendant’s adoption of the mark to be dishonest, considering his past employment with the Plaintiff and his presence in the Plaintiff’s factory alongside ‘TIGER’ branded products.

Analysis:

This case underscores the significance of protecting intellectual property rights. The Court’s decision to issue an injunction against the Defendant reinforces the notion that prior usage and genuine adoption play pivotal roles in trademark conflicts. This judgment establishes a guiding precedent for forthcoming cases grappling with analogous concerns, stressing the essentiality of comprehensive evidence and compliance with legal tenets.