The Delhi High Court passed an order yesterday in Irani v. Mirza granting a cross-class ad interim injunction to a Plaintiff claiming rights in the vintage motorbike trademark Yezdi.
The Plaintiff’s claim at passing off faces some utterly deal-breaking objections: the Plaintiff admits it hasn’t sold a product under the trademark in over 20 years [paragraphs 5(v) and (ix), 8(x)], that it permitted another entity to register the trademark, which entity then didn’t renew the trademark, went into liquidation and the Liquidator has now asserted a claim over the trademark [paragraphs 5(x) and (xiii), 8(xi)] and that it filed fresh trademark applications in 2013–14 which aren’t registered even as the Defendants hold a registration in relation to footwear, which has nothing to do with motorbikes[paragraphs 5(vii) and (xiv)].
There’s one piece of evidence that appears to hold up in the Plaintiff’s favour: there’s an advertisement for the Defendants’ footwear that claims to be inspired by the Plaintiff’s claimed trademark and, since it’s a vintage brand, there is the possibility that there’s a case to be answered for dilution, though, for what it’s worth, the Defendants claim their advertisement makes no such connection [paragraphs 7(ii) and (iv), 8(xiii)].
In effect, this is a pure passing off claim, backed by zero sales in over two decades, no product in the market, with the (now lapsed) rights over the trademark last held by a company now in liquidation, against a registered proprietor, whose registration faced no challenge from this Plaintiff, with a product in the market, in another entirely unrelated product segment.
This should mean no ad interim injunction, right? Right?
Right.
“[The] Plaintiff is not entitled to the interim injunction as sought [for] restraining the Defendants from using the mark Yezdi,” says Justice Endlaw. He recites numerous very sensible reasons: the Plaintiff hasn’t proved its title in the trademark, didn’t oppose the Defendants’ trademark in prosecution, the Plaintiff hasn’t established any recent use, and there’s no reason to believe that the Defendants’ products are being purchased “for the reason of [their] association with the Plaintiff” (which is a far better description of the basis of the Plaintiff’s claim than anything I’ve managed so far in this post) [paragraphs 13(i)-(iv)]. He even says the advertisement the Plaintiff rests its case on doesn’t even appear to have been put out by the Defendants [paragraph 14].
He continues, “I am of the opinion that the Defendants are not entitled to, in their advertisements or otherwise, convey that [their] Yezdi shoes [are] inspired by vintage bikes from Yezdi, or otherwise have any association with [Yezdi] bikes, or to allow anyone else to portray such association. Accordingly, [the Defendants are restrained] from, in their advertisement or otherwise, claiming that their footwear under the mark Yezdi is inspired by motorcycles/bikes from Yezdi, or otherwise [conveying] any association with Yezdi motorcycles/bikes. The Defendants are also restrained from allowing [marketing] websites through which their goods are sold also to convey any such association.” [paragraphs 14–15]
So there’s no interim injunction but…there is?
To be clear, there’s nothing on elevated thresholds of proof for cross-class claims, nothing on the sustainability of such claims in pure passing off actions, nothing on advertisement-only injunctions, nothing on the applicability of such injunctions in passing off cases against registered proprietors.
It’s an order prohibiting a registered proprietor from advertising a trade connection with a unregistered proprietor whose proprietorship over a trademark in another class hasn’t been established, and who has filed a suit — a suit — for full-blown passing off.
It’s not a restraint on use. It’s not a restraint on advertising. It’s a restraint on evoking a connection in an advertisement, even though the one thing on which the hyper-limited scope of the injunction could be justified “does not appear to emanate from the Defendants”.
So please stop doing something that I don’t think you were doing to begin with?
Okay. I guess.
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