In this note, we bring to you 3 trademark cases on different topics. The Sequoia Capital case relates to misuse of trademarks on social media groups, and the Tanishi case concerns the trademark rights of a distributor. The last case involving Meeco expounds when trademark rectifications can be filed after the infringement suit is initiated.
Fraudulent use of ‘Sequoia’ trademark on social media groups restrained
In a case filed by Sequoia Capital, the Delhi High Court restrained the fraudulent and wrongful use of the ‘Sequoia’ trademark in social media groups. The defendant in the case was wrongfully representing affiliation with Sequoia Group in groups on WhatsApp and Telegram. By forming a group entitled John Analyst Group, the defendant was defrauding people by offering cryptocurrency trading and investment advice.
After reviewing the facts and evidence, the Court restrained the use of ‘Sequoia’ by the defendant and ordered the takedown of the groups on WhatsApp and Telegram. The Court also ordered the takedown of the websites on which group members were being made to create accounts. Additionally, the Court asked telecom service providers to block the phone numbers and ordered Meta and Telegram to not permit the formation of any groups using the listed phone numbers.
Citation: SEQUOIA CAPITAL OPERATIONS LLC vs JOHN DOE AND ORS., High Court of Delhi, 24th January, 2024, CS(COMM) 69/2024
Distributor has no trademark rights over the mark – Tanashi, says the Delhi High Court
In a case involving infringement and rectification of the mark, Tanashi, the Delhi High Court held that the plaintiff is the owner of the trademark and that the defendant, a prior distributor, holds no rights in the trademark. The Court passed a permanent injunction restraining the defendant from using the mark, and also, cancelled the defendant’s trademark registration over ‘Tanashi.’ The Tanashi mark was registered in class 9 and was being used for electronic products such as televisions, VCRs, etc.
Citation: Harbans Kaur Vs. Gurmarg Appliances Pvt. Ltd and Ors. [CS (Comm.) 447/2018, CC 987/2007, Crl. M.A. 14610/2007, C.O. (Comm. IPD-TM) 32/2021 and C.O. (Comm. IPD-TM) 346/2022]
Section 124 stay of ‘trademark suit’ must be based on a pleading of invalidity, says the Karnataka High Court.
In a case involving the marks, Meeco and Meeco Cab, the Karnataka High Court was asked to decide whether the trial court can stay a trademark suit based on rectifications filed if there is no plea of invalidity in the pleadings. Stating that a pleading of invalidity and an issue based on the same is mandatory to stay a trademark suit when rectification proceedings are pending, the High Court set aside the stay order of the trial court. The rectification petitions were filed in the case after the suit was initiated, and the trial court stayed the suit noting the pending rectifications without framing an issue or determining prima facie tenability.
Citation: M/s. MEENU ELECTRIC CO. vs M/s DYNAMIC ELECTRICALS & Ors., High Court of Karnataka, 20th December, 2023, WRIT PETITION NO.32838 OF 2015 (GM-CPC)
In the Tanishi and Meeco cases, Courts have reiterated well established principles. It has been held in many cases that distributors of products do not acquire any trademark rights unless the distributor contract states the contrary. Also, it is now well accepted that once a trademark infringement suit is initiated, a rectification petition can be filed only after an issue is framed regarding prima facie tenability.
It is however interesting to note the Court’s order to take down social media groups based on the use of the Sequoia trademarks to defraud group members. In the context of increasing cybercrimes, such orders not only safeguard trademark rights, but also play an important role in protecting the general public.
The case notes in this blog post have been written by IP attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases, or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, speak with an IP expert/attorney – [email protected] or 91-80-26860414/24/34.