Thursday, February 27, 2014

Delhi High Court declares “Brahmos” as a Well-known Mark and restrains FIIT JEE from using it

On February 24, 2014, in a 32-page decision delivered in a suit for trademark infringement instituted by Brahmos Aerospace Private Limited against FIIT JEE limited, the Delhi High Court declared the plaintiff’s mark “BRAHMOS” as well-known and granted an interim injunction restraining the defendant from using the trademark BRAHMOS in relation to educational activities or as part of its domain name and in any manner which could cause confusion and deception.

As most of our readers must be aware, the plaintiff is a joint venture between the Defence Research and Development Organization (DRDO) of India and the Federal State Unitary Enterprise of Russia, with DRDO being the majority shareholder. The plaintiff is popularly known as the manufacturer of the world’s fastest supersonic cruise missile, Brahmos.

The first defendant is a popular private institution which coaches students who aspire to successfully crack the Joint Entrance Examination (JEE) conducted by the prestigious Indian Institutes of Technology (IITs). The second defendant is USA University Quest (UUQ) which partners with the FIIT JEE to help Indian students secure admissions to US universities.

It was the plaintiff’s case that its well-known trademark BRAHMOS was being used by the defendants in connection with their aptitude tests, which had led to actual confusion. Further, according to the plaintiff, the mark BRAHMOS was being used by the plaintiff in connection with its training and education programmes as well. Consequently, according to it, the likelihood of confusion was higher. To this end, the plaintiff cited instances wherein it had received queries from students asking if taking the Brahmos aptitude test of the defendants would improve their chances of securing employment with the plaintiff.

The defendants contended that:
A.       the mark BRAHMOS was not being used as a trademark, but was used only to indicate a connection in the course of trade. Further, FIIT JEE continued to be used by the first defendant as its flagship trademark, and BRAHMOS was being used only in connection with one of the several aptitude tests conducted by it.
B.      the plaintiff and the defendants were in entirely different spheres of activity. Consequently, there was no possibility of confusion and deception and that the use was bonafide.
C.      BRAHMOS was not a distinctive mark since terms such as “Brahmo Samaj” have been in vogue for a long time.
D.      the Plaintiff was using Brahmand and not Brahmos, for its training programmes. Therefore, there could be no confusion/deception in the field of education/training.

The Court took the view that the trademark BRAHMOS was not a dictionary word, but a coined word, a portmanteau formed from the names of the rivers Brahmaputra and Moskva.

Citing the decisions in Bloomberg Finance LP vs. Prafull Saklecha & Ors and Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors, the Court relied upon Section 29(4) to conclude that the mark BRAHMOS was well-known and that the defendants’ use of the mark was “without due cause”/valid justification. The Court rejected the defendants’ contention that their use of the mark was not in a trademark sense given that it was being used in the course of trade. Consequently, the defendants were restrained from the using the mark in any manner which could cause confusion/deception.

It is to be noted that sub-sections (1)-(4) of Section 29 do not require the mark to be used as the flagship mark for it to be infringing. Only Section 29(5) deals with use of the mark as a trade name, or part of the trade name, or as the name of his concern or a part thereof by the defendant in respect of identical goods or services. However, "use in the course of trade" being broader in scope, includes use of the mark as a tradename or as part of the tradename or business concern by the defendant.

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