DELHI HIGH COURT GRANTS AN INJUNCTION AGAINST THE DEFENDANT FOR INFRINGEMENT OF
THE TRADE MARK "MIND GYM"

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DELHI HIGH COURT GRANTS AN INJUNCTION AGAINST THE DEFENDANT FOR INFRINGEMENT OF
THE TRADE MARK "MIND GYM"

Honorable High Court of Delhi granted an injunction against MINDGYM Kids Library Pvt. Ltd. in an action of passing off and infringement of the registered trademark MIND GYM of the plaintiff's company MINDGYM Ltd., incorporated in UK.

A suit for permanent injunction was filed by the plaintiff against the defendant for the infringement of the trade mark "MIND GYM". The plaintiffs were involved in the business of education/training, mind management, development of mind and related services since 1999 in UK and since 2004 in India. The services of the plaintiff extend to over 30 countries around the world, including India. The defendants were involved in the business of running an innovative kids' library and exchange concept under the name MIND GYM since 2008.

The plaintiff essentially claimed infringement of their registered trademark that the defendant had applied to their services. The plaintiffs also claimed that the defendants were passing off on their goodwill and reputation. The defendants on the other hand argued that the mark MIND GYM is not protectable as it is highly descriptive because it gives indication about the exercise of mind.

While considering the arguments of the defendants that that the mark MIND GYM is common to the trade and there are many companies who have been using the mark MIND GYM as part of their corporate names or the firm names even prior to the user claimed by the plaintiff, the court observes that in order for such a claim to succeed the other users who use such a mark must be large in number or must have a substantial presence. However, the defendants failed to establish the same.

The plaintiff also points out that although the defendants had argued that the name was highly descriptive and cannot be registered, they had applied for a registration for the mark themselves. The court observed that when the defendant has applied for such a registration, it is assumed that they consider the mark to be distinctive. They are now therefore stopped from arguing that it is not.

While deciding the matter a number of cases were referred by the Honorable High Court. The court relied on the case N.R. Dongre V. Whirpool to state that the goodwill could also be due to the trans-border reputation of the company and that it was not necessary that localized reputation was necessary. The plaintiffs had established on facts that they did have this reputation. The court also observed that there was a great risk of consumers being confused by the two marks and therefore the claim of passing off was made out.

Further, the defendant also contended that the phrase MIND GYM was a part of its corporate name and that they should not therefore be restrained from using their corporate name. The said contention was rejected by the court. The court relied on a number of High Court judgments such as K.G Khosla Compressors Ltd. v. Khosla Extraktion Ltd., and Kirloskar Diesel Recon P. Ltd. V. Kirloskar Proprietary Ltd., to throw light on numerous instances where the court had restrained the use registered trademarks as a part of a corporate name in an action of passing off and infringement.

The court held that the plaintiff's mark was entitled to protection from infringement and therefore the defendant was restrained from using the trademark MIND GYM. The court also found that a strong case for passing off had been made out by the plaintiff because of trans-border reputation and goodwill that the plaintiff had acquired.

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Contributed By : Aditi Raol- Advocate
   Designed By : Vikash Singh