Doctrine of unclean hands- Now a defense in trademark infringement!

This post was first published on March 22, 2011.The Indian Courts, in the recent past have continuously surprised us by pulling one trick after the other when it comes to dealing with Intellectual Property cases. This time around it is the Bombay High Court while dealing with a trademark infringement matter in the recent case of M/S.J.K. Sons vs M/S.Parksons Games & Sports (decided on March 18, 2011).The facts involve M/S Parksons Games & Sports (respondents) being the owners of the trademark ‘555’ for playing card. The respondents have used the mark 555 in conjunction with other marks such as MEREDIAN, MERELANE Delux and MERELANE Premium. The appellants adopted the mark 555 for their playing cards as well. One look at the facts and one is tempted to conclude that this is a straight forward case of infringement and passing off and the appellants should be restrained.However, the Bombay High Court had a slightly different idea. The appellant pointed towards the existence of the cigarette brand 555 (yes the extremely famous State Express 555 cigarettes manufactured by British American tobacco!) and the court observed that there exists a third party that owns the trademark 555 for cigarettes and that it is a defence even to an action for passing off or infringement of a trade mark that the plaintiffs (in this case the respondents) marks are an imitation of the mark of another. The Court categorically observed that-“There is a homely phrase, long current in this Court, that a Plaintiff must come into equity with clean hands…The same things are necessary to constitute a title to relief in equity in the case of the infringement of the right to a trade mark, as in the case of the violation of any other right of property. But when the owner of a trade mark applies for an injunction to restrain the Defendant from injuring his property by making false representations to the public, it is essential that the Plaintiff should not in his trade mark, or in the business connected with it, be himself guilty of any false or misleading representation”The Court also rejected the respondent’s argument that the third party that originally owns the mark 555 has not initiated any action. However, the Hon’ble Judge did say that the Court cannot rely on its personal knowledge and appended the responsibility on the appellant to adduce evidence in respect of their case that the respondents had themselves infringed the mark 555 which belongs to another.

This decision leads to a whole new defense in trademark infringement cases i.e. the defense of unclean hands. If the defendant in a trademark infringement and passing off suit can show that the plaintiff’s mark itself is an imitation of another trademark then the Plaintiff may be said to have approached the court with unclean hands and the relief may be denied.

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