India refuses to nod…for Noddy

For the first time, I was forced by my friends to include pictures in my blog. No wonder, the reason is that they all love the famous character ‘Noddy’. Well, my reason for writing the blog is to share a very recent and an interesting Trade Mark case in the Delhi High court.

The Plaintiff, Chorion Rights Limited herein referred as ‘Chorion’ filed a case seeking interim injunction restraining the Defendants, Ishan Apparel herein referred as ‘Ishan’ in the High Court of Delhi, India. Chorion is the owner of the worldwide trademark rights in Noddy including the Noddy name and the character image. Chorion argued that the Noddy is a popular character since 1940s and submitted the media details featuring Noddy in the court. Chorion avers that BBC worldwide is it’s licensing and marketing agent in India and cites the “make way for Noddy” television series was first broadcasted in India in 2002. Chorion claims it registered a global trademark portfolio in various countries. Chorion further claims to be the owner of the various domain names including Noddy.com, noddyshop.com, noddyshop.eu, jointnoddy.com etc. Chorion disclosed the annual revenue generated by use of ‘Noddy’ from the year 2001 to 2008. Chorion in its suit alleges that infact its only one allegation is that the defendants (‘Ishan’) are engaged in the Manufacturing, selling and marketing of cheap and low quality readymade children apparel under the identical Trade Name of ‘Noddy’ in Delhi and NCR.

Meanwhile, Ishan too filed an application for a text ‘Noddy’ along with an image of boys head next to the letter y in the image. Ishan claims it registered the proprietorship for ‘Noddy’ since 1995 and it also showed its first invoice dated 1997. Ishan’s reply to the plaintiff’s interim injunction was strong and noteworthy to discuss here.

The defendant ‘Ishan’ emphasized the point that it cannot be injuncted as it was clearly ‘first past the post’ as far as the question of the use of the ‘Noddy’ character is involved. Ishan submitted that Chorion merely objected to its Trade Mark application but never pursued it. Also, the defendants reiterates the contentions in its response to Chorion’s “cease and exist” notice stating that its field of operation is completely different from that of the plaintiff and that there is no overlapping. Also, the suit by the plaintiff, for the infringement of the copyright ought to be rejected as the artworks being used by the plaintiffs and the defendants are different.

Establishing prior use of Mark:

The judge in his judgment referring a case said that this case also involves character merchandising. He added “when contesting parties hold Trademark registrations, their rights are to be determined on the basis of principles applicable for passing off, the most important component of which is establishing prior use of the mark”. In this case the plaintiff ‘Chorion’ has not adduced any evidence to show prior use in India, it is not even the prior register owner of the said Trade Mark in India. On the other hand, the defendant “Ishan” not only established prior user but also prior registration of its mark from 1995. Since the plaintiff has failed to show the prior use of the mark before 1995 and their best evidences dates back to 2002, the judge dismissed the case by concluding on account of lack of evidence by the plaintiff, it is not appropriate to injunct the defendants for using their registering trademark.

Take-a-ways from the Author:

The purpose of my blog is to educate the clients about the Trademark Infringement in India. “Prior use of Mark” in Trademark infringement can be related to “Working of Invention” that act as a ground to obtain compulsory license from Indian Patent office. My Point here is that the corporates should keep the above case in mind whenever they take business decisions for brand management and have ample prior use evidence for contesting infringement of Trade Mark and/or copyright. The level of bar for establishing a mark as a well-known trade mark is becoming much with specially when the company has no established presence in India.

Case No: IA 8042/2009 in CS(OS) 1154/2009

Author – Veera Raghavan Rajendran,

Senior Patent Consultant, IIPRD.

The Author of the Blog can be reached: [email protected].