In CS(COMM) 422/2020-DEL HC- Prior user of mark can seek injunction against registered owner & action for passing off is premised on right of such user generating goodwill: Delhi HC grants relief to prior user of domain name in trademark infringement suit Justice Navin Chawla [05-07-2022]

Read Order: MRS. ANUGYA GUPTA v. MR. AJAY KUMAR & ANR 

Tulip Kanth

New Delhi, July 8, 2022: While asserting that the plaintiff obtained the registration of her domain name prior to that of the defendant and the goodwill and reputation of her domain name was shown, the Delhi High Court has granted relief of interim injunction to the plaintiff with respect to the domain name ‘SARKARIRESULT.INFO”.

Referring to the judgments of the Top Court in S. Syed Mohideen v. P. Sulochana Bai and N.R. Dongre & Ors. v. Whirlpool Corporation & Anr, the Bench of Justice Navin Chawla affirmed, “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 action for passing off is premised on the right of the prior user generating goodwill and shall remain unaffected by any registration provided under the Act.”

The plaintiff had filed the present application in question seeking an order of interim injunction to be passed by the Court, restraining the Defendants from using the marks “SARKARI RESULT”, “SARKARIRESULT.INFO”. Their contention was that the defendants, themselves, having made a claim of their trade mark being deceptively similar to the domain name of the plaintiff, couldnot dispute that the two couldnot co-exist. The confusion was bound to happen in case the websites of the defendants were allowed to continue. The plaintiff being a prior user and proprietor of the mark was therefore, entitled to the protection of the same.

According to the Bench, the plaintiff was able to make out goodwill and reputation in the mark ‘SARKARIRESULT.COM’ but the documents filed by the defendants in support of their user of the mark ‘SARKARIRESULT’ or ‘SARKARIRESULTS’, prima facie, did not inspire much confidence.It was also clarified by the Bench that a prior registrant can protect its domain name against the subsequent registrants. The confusing similarity in domain names may be a ground for complaint, and similarity is to be decided on the possibility of deception amongst potential customers.

Emphasizing on the fact that both the domain names in question were confusingly similar , the Bench clarified that the plaintiff had placed prima facie material on record to show the goodwill and reputation of her mark/domain name, ‘SARKARIRESULT.COM’, in the form of its ranking, number of visitors, number of downloads from the mobile application and revenue earned. In contrast, the defendants had merely placed on record the registration of their domain name, which was subsequent to that of the plaintiff and the defendants had also not placed any material on record which suggested the reputation in the said domain name.It was also opined by the Bench that the adoption of the domain name by the defendants also appeared to be dishonest.

Thus, allowing the application and restraining the defendants from using the said domain name, the Bench concluded this matter by observing that the continued use of the domain name by the defendants might also lead to the dilution of the mark of the plaintiff and the plaintiff would likely suffer grave irreparable injury in case the ad-interim injunction was not granted in her favour.