Citation: Msc. No. 57566 of 2022 (IPR)
Date of Judgment: 17.04.2023
Coram: Hon’ble Mr. Justice S.R. Krishna Kumar
Introduction
The case Blink Commerce Pvt. Ltd. (formerly Grofers India Pvt. Ltd.) vs. Blinkhit Pvt. Ltd. was heard in the Karnataka High Court. The dispute revolved around trademark infringement claims regarding the marks “BLINKIT” and “BLINKHIT.” The court examined the principles of trademark registration, use, and the grant of interim injunctions, particularly in the context of Indian intellectual property law.
Facts of the Case
1. Parties Involved:
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Appellant: Blink Commerce Pvt. Ltd. (previously Grofers India Pvt. Ltd.), operating the “BLINKIT” brand.
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Respondents: Blinkhit Pvt. Ltd. and its director, Harish S. Shetty, claiming ownership of the trademarks “BLINKHIT” and “iBLINKHIT.”
2. Trademark Dispute:
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Respondents registered the trademarks “BLINKHIT” and “iBLINKHIT” in 2016 for certain classes.
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Blink Commerce rebranded as “BLINKIT” in 2021 and began operating under this new mark.
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Respondents alleged that the “BLINKIT” mark infringed upon their registered trademarks and filed a suit seeking a permanent injunction.
3. Temporary Injunction:
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The respondents filed an interim application (I.A.1) under Order 39, Rules 1 and 2 of the Code of Civil Procedure, 1908, for a temporary injunction against Blink Commerce to prevent them from using the “BLINKIT” mark.
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The trial court granted the injunction, prompting the appeal.
Legal Issues
1. Trademark Infringement:
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Whether the use of “BLINKIT” infringed upon the respondents’ registered trademarks “BLINKHIT” and “iBLINKHIT.”
2. Validity of Interim Injunction:
- Whether the trial court’s order granting a temporary injunction adhered to the principles of law governing trademark disputes.
3. Doctrine of Use:
- Whether the respondents had established a valid claim through actual use of the trademarks or if their rights were limited to registration.
Appellant’s Arguments
1. Non-Use of Trademark:
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The respondents had not used their trademarks since registration in 2016, which disqualified them from claiming infringement.
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Evidence from financial statements showed no revenue or business activity under “BLINKHIT” or “iBLINKHIT.”
2. No Likelihood of Confusion:
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The “BLINKIT” mark was visually, phonetically, and conceptually distinct from “BLINKHIT.”
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The businesses of both parties operated in different fields, reducing the possibility of confusion.
3. Doctrine of Prior Use:
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The appellant argued that rights in a trademark arise from actual use, as established in S. Syed Mohideen v. P. Sulochana Bai (2016), rather than mere registration.
4. Misapplication of Law:
- The trial court treated trademark registration as conclusive evidence of rights, contrary to the principle that registration merely recognizes pre-existing common law rights.
Respondents’ Arguments
1. Ownership of Registered Marks:
- The respondents claimed their registered trademarks established prima facie rights and any use of a deceptively similar mark infringed those rights.
2. Misleading Similarity:
- The use of “BLINKIT” created confusion in the market and diluted the distinctiveness of “BLINKHIT.”
3. Preservation of Rights:
- They argued that the injunction was necessary to prevent further harm to their brand and reputation.
Court’s Observations
1. Principle of Use:
- Referring to S. Syed Mohideen v. P. Sulochana Bai and other precedents, the court emphasized that trademark registration alone does not create rights. Actual use and establishment of goodwill are essential.
2. Non-Use by Respondents:
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The respondents failed to provide evidence of business activity or income generated under the trademarks “BLINKHIT” or “iBLINKHIT” since 2016.
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This non-use weakened their claim for an injunction.
3. Distinctiveness of Marks:
- The court found no significant similarity between “BLINKIT” and “BLINKHIT” in terms of visual, phonetic, or conceptual elements.
4. Balance of Convenience:
- The court noted that granting the injunction would cause irreparable harm to Blink Commerce, which had already established a substantial market presence under “BLINKIT.”
Judgment
1. Appeal Allowed:
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The Karnataka High Court set aside the trial court’s order granting the temporary injunction.
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The respondents’ application for an injunction (I.A.1) was dismissed.
2. Direction to Trial Court:
- The trial court was instructed to expedite the disposal of the main suit, preferably within one year, without being influenced by the findings in this appeal.
Legal Analysis
1. Doctrine of Prior Use:
- Indian trademark law, under Section 34 of the Trademarks Act, 1999, prioritizes rights arising from prior and continuous use over mere registration. This principle was central to the court’s decision.
2. Non-Use and Abandonment:
- Section 47 of the Trademarks Act allows for the cancellation of a trademark if it has not been used for a continuous period of five years. The respondents’ non-use of their marks could potentially lead to their cancellation.
3. No Likelihood of Confusion:
- The court’s analysis of the dissimilarity between the marks aligns with Section 29(2) of the Trademarks Act, which outlines factors to assess confusion and deception.
Conclusion
The case highlights the importance of actual use in establishing and defending trademark rights in India. While registration provides statutory recognition, it does not override the necessity for genuine and continuous use. The Karnataka High Court’s judgment underscores the balance between protecting trademark rights and preventing misuse of the legal system by parties not actively using their marks. This decision is a significant precedent in trademark law, reaffirming the principles of prior use, distinctiveness, and non-use under the Trademarks Act, 1999.
