The case of INSTITUTE OF DIRECTORS v. WORLDDEVCORP TECHNOLOGY AND BUSINESS SOLUTIONS PVT LTD & ORS. (2023 DHC 8923) was heard in the Delhi High Court on December 11, 2023. The plaintiff, Institute of Directors, alleged trademark infringement by the defendants, World Devcorp Technology and Business Solutions Pvt. Ltd & Org. ,for their use of the expression "Directors' Institute '' as part of their mark.
The plaintiff, Institute of Directors, holds registered trademarks under the Trade Marks Act, 1999, in Classes 16, 35, and 41. These trademarks pertain to various goods and services, including printed matter, association services, and arranging and conducting conferences and workshops. The plaintiff alleged that the defendants' use of the expression "Directors' Institute" in their mark infringed upon their trademarks. The defendants argued that the plaintiff had suppressed a response submitted to the Trademarks Registry, which stated that the words used in the marks were common English language words and descriptive in nature. They contended that the plaintiff, by making this statement, had admitted that no person was entitled to claim exclusive proprietary rights over the said words.
The plaintiff's counsel argued that the defendants' use of the expression "Directors' Institute" in their mark infringed upon the plaintiff's registered trademarks. They contended that the plaintiff was entitled to claim exclusivity in respect of Classes 16 and 35, despite the admission made before the Trademarks Registry. The defendants' counsel argued that the plaintiff's admission before the Trademarks Registry disentitled them from seeking an injunction against the use of the words "Directors' Institute." They contended that the words used in the marks were common English language words and could not be monopolised by any one proprietor.
The court held that the plaintiff's admission before the Trademarks Registry was detrimental to their claim for exclusivity in the use of the words "Directors' Institute." The court further observed that trademark rights could only be claimed by the proprietor of the mark. Since the plaintiff had admitted that the words used in their marks were common English language words, they could not claim exclusivity over them. The court concluded that the plaintiff was not entitled to an injunction against the defendants' use of the expression "Directors' Institute."
Trade Marks Act, 1999: The plaintiff's registered trademarks were protected under this act, which provides for the registration and protection of trademarks in India.
Section 28(1) of the Trade Marks Act: This section grants relief against infringement only to the holder of a valid registration in a trademark.
Section 33 of the NHAI Act: This section empowers the Central Government to issue directions to the National Highway Authority of India (NHAI) on questions of policy.
Section 118 and Section 139 of the Negotiable Instruments Act, 1881: These sections create a presumption in favor of the holder of a negotiable instrument, such as a cheque, that it was supported by consideration.
Section 9(1)(vi) and Section 9(1)(vii) of the Income Tax Act, 1961: These sections define 'royalty' and 'fees for technical services' respectively, for the purpose of taxation.
The court's decision was based on the admission made by the plaintiff before the Trademarks Registry, where they stated that the words used in their marks were common English language words and descriptive in nature. This admission undermined their claim for exclusivity over the words and disentitled them from seeking an injunction against the defendants' use of the expression "Directors' Institute." The court also considered the provisions of the Trade Marks Act, which grant relief against infringement only to the holder of a valid registration in a trademark. Since the plaintiff's admission weakened their claim to exclusivity, they were not entitled to relief under Section 28(1) of the Trade Marks Act. Additionally, the court observed that words of ordinary English usage cannot be monopolised. In light of these considerations, the court held that the plaintiff was not entitled to an injunction against the defendants' use of the expression "Directors' Institute."
The case of Institute of directors v. world devcorp technology and business solutions pvt. Ltd & ors. highlights the importance of admissions made by parties in legal proceedings. The court's decision, based on the plaintiff's admission before the Trademarks Registry, underscores the significance of consistent and accurate statements in maintaining legal claims. The case also emphasizes the principle that words of ordinary English usage cannot be monopolised, further reinforcing the need for clarity and specificity in trademark registrations.
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