Scrum Alliance, Inc. v. Prem Kumar S. & Ors., CS(COMM) 700/2021

This update examines a judgment of the Delhi High Court in a trademark infringement suit filed by Scrum Alliance, Inc., a US-based certification organization for Scrum, a form of Agile methodology for software development, against Prem Kumar S. and others, who are also engaged in providing Certified ScrumMaster certification services under the mark CSM.

Facts

Scrum Alliance, Inc. (the plaintiff) claims to be the largest and most established Scrum certification organization in the world and is the registered proprietor of several certification trade marks (CTMs) registered in India under the Trade Marks Act, 1999, including CERTIFIED SCRUMMASTER, CSM in classes 41 and 42, covering educational and software-related services.

Prem Kumar S. (Defendant 1) is the proprietor of a registered trademark CSM and the founder and director of Global Association for Quality Management (Defendant 2) and GAQM Certification Pvt. Ltd. (Defendant 3), which are also involved in providing Scrum certification services under the mark CSM and the logo, which are deceptively similar to the Plaintiff’s marks.

The plaintiff alleged that the defendants were infringing its registered CTMs by using the impugned marks for identical services, thereby causing confusion and deception among the consumers and diluting the plaintiff’s reputation and goodwill. The plaintiff also alleged that the defendants were not entitled to use the mark CSM as a CTM, as they had obtained registration for it as a regular trademark and not as a CTM.

Decision of the Court

The defendants are infringing the plaintiff’s CTMs under Section 75 by using the impugned marks for identical or similar services, as the impugned marks are identical or deceptively similar to the plaintiff’s CTMs, and are likely to cause confusion and deception among the consumers as to the source and quality of the services.

The defendants cannot claim the benefit of Section 76(3) of the Trade Marks Act, as the said provision is applicable only to the use of the mark CSM, and not to the use of the mark CERTIFIED SCRUM MASTER or the logo, which are not registered in favour of the defendants. Moreover, the defendants have obtained registration for the mark CSM as a regular trademark and not as a CTM, and hence they cannot use it as a CTM for providing certification services. 

The Court was of the opinion that the defendants cannot be injuncted from using the word mark “CSM”. The plaintiff is entitled to an interlocutory injunction against the use by the defendants as well as all others of the mark “CERTIFIED SCRUM MASTER” and the logo.