Case Title: Mrs Anugya Gupta V. Mr Ajay Kumar & Anr.
The Delhi High Court has reaffirmed that it is irrelevant to determine who created the goodwill in the market first and whether the subsequent user is engaging in misrepresentation in the course of business that is harming the goodwill of the prior user simply because both the prior user and the subsequent user are registered proprietors.
According to Justice Navin Chawla, any registration made possible by the Trademarks Act would have no bearing on the passing-off claim, which is based on the preceding user's right to create goodwill.
"The register maintained by the Trademark Registry does not provide its user by the persons in whose name the mark was registered. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to the user of the mark from its mere presence in the register of the Trade Mark," the Court further reiterated.
Anugya Gupta had filed a petition with the court asking that defendants be prohibited from using the marks "SARKARI RESULT," "SARKARIRESULT.INFO," and "SARKARIRESULT.COM" in connection with domain names, websites, mobile applications, social networking platforms, etc. because doing so might be considered passing off her information services regarding employment and career opportunities. As the initial step in realising her business idea of offering information services to students, instructors, parents, job seekers, and the general public, the plaintiff adopted the trademark "SARKARIRESULT" and registered the domain name "SARKARIRESULT.COM" in 2012.
The plaintiff additionally said that she opened the website "SARKARIRESULT.COM" to the public in June 2012. Additionally, it listed the plaintiff's email address as "SARKARIRESULT@GMAIL.COM" on the website so that anybody interested may get in touch with her and request more information about employment and career prospects. The plaintiff further claimed that she used social networking sites including Facebook, Twitter, and Instagram to interact with the public after adopting the gadget or logo in 2014. Thus, it was claimed that the defendants filed to register the mark "SARKARIRESULT" with the Registrar of Trade Marks in May 2015 in addition to obtaining the domain names for the aforementioned websites.
The plaintiff was able to establish goodwill and reputation in the mark "SARKARIRESULT.COM," according to the court's first assessment, and the defendants' documentation supporting their use of the mark "SARKARIRESULT" or "SARKARIRESULTS" did not appear to be very convincing.
"It is equally well settled that a prior user of the mark can seek an order of injunction even against a registered owner of the mark. The rights of the prior user are recognised as superior to that of the registration, and even the registered proprietor cannot disturb/interfere with the rights of the prior user," the Court said.
The Court declared that the defendants' adoption of the domain name was dishonest prima facie.
"The subsequent use of a mark dishonestly adopted is equally tainted and totally immaterial. The party who has stolen the mark cannot claim the benefit of a concurrent user because the governing principle of concurrent user lies on account of honesty," the Court added.
As a result, the Court prohibited the defendants from using the domain names "SARKARIRESULT.INFO" or "SARKARIRESULTS.INFO" or any other mark that was confusingly similar to or identical to the domain name of the plaintiff while the case was still pending.