The Hon’ble Delhi High Court in the case of Walmart Apollo LLC v. Abdul Majid Gagroo, Appeal Number [CS(COMM)-509/2022], decided on 10.04.2023, proceeded ex-parte against the Defendant and refrained the Defendant from using the well-known Trademark “WAL-MART”/”WALMART” in connection with services covered by Plaintiff’s registered marks.
Walmart Apollo LLC (hereinafter referred to as “the Plaintiff”) is a wholly owned Indian subsidiary of Walmart Inc., an American Corporation founded in 1962. The name “WALMART” is stated to have been coined by taking the first half of the surname of the founder of the company i.e. Mr. Sam Walton and “Mart” is an abbreviation for the word “Market”. Walmart stated that, in 2018, it assigned the Walmart mark to the Plaintiff. and it has various registrations of Walmart, as Word Mark, in Classes 16, 35 and 42. It is a well-known global retail firm that operates a chain of hypermarkets, discount department shops, and grocery stores. Plaintiff’s “Walmart” trademarks are registered both in India and internationally.
While, Abdul Majid Gagroo, (hereinafter referred to as “the Defendant”) is using the marks “WAL MART”/ “WALMART”/”THE WAL MART” (hereinafter referred to as “impugned marks”), both as word and label marks, thereby infringing the registered trademarks of the Plaintiff. The impugned marks are also prominently displayed outside the shops run by Defendant, as well as on other common websites, like Justdial and Findglocal. The Defendant is not only infringing the Plaintiff’s registered Trademark but is also passing off its goods and services as those of the Plaintiff.
Being aggrieved by the acts of the Defendant, the Plaintiff files a suit against the Defendant in the Hon’ble Delhi Court seeking relief for the same.
CONTENTION OF BOTH THE PARTIES
The Plaintiff contended that the Trademark of the Plaintiff affects its goodwill. as the Plaintiff operates more than 10500 stores under 46 banners in 24 countries under the corporate name and trading style Wal-Mart/Walmart and has registrations of the Walmart/Wal-Mart in at least 90 jurisdictions including India among others. This, makes it evident enough that the Plaintiff is well-known company and has been using the said mark since a very long period of time.
The Plaintiff further submits that the Defendant is infringing on the Plaintiff’s registered Walmart marks by using the impugned marks. The marks are also frequently physically displayed outside the Defendant’s businesses, as well as on Justdial, Findglocal, and other similar websites.
The Plaintiff states that the Defendant is not only infringing on the Plaintiff’s registered Trademark, but also passing off its goods and services as the Plaintiff’s.
The Plaintiff contests that such unwarranted use of the Plaintiff’s marks by the Defendant has tampered with the reputation of the Plaintiff and has also resulted in dilution of the Plaintiff’s global reputation.
The Defendant neither made an appearance before the court nor a written statement was ever filed on behalf of Defendant and hence the matter was proceeded ex-parte.
DECISION AND FINDINGS
The Hon’ble Court made out a prima facie case in favour of Plaintiff. The court held that, based on the evidence presented, there is no doubt that Defendant is using the mark impugned in relation to services similar to those rendered by Plaintiff under its registered word marks, and that, given Plaintiff’s reputation, there is also substance in Plaintiff’s contention that Defendant is attempting to misrepresent itself as associated with Plaintiff and is thus guilty of passing off its services.
As a result, the court dismissed the claim, despite the fact that the Defendant was not present throughout the proceedings, the Hon’ble Court ordered the Defendant to pay token costs and damages of Rupees One Lakh which was to be submitted with the Registrar General via crossed cheque/demand draft.
There is a very thin line between “well-known marks” and “reputed marks”. It is important for one to understand that Section 11 of the Trademark Act,1999 (hereinafter referred to as “Trademark Act”) only gives well-known Trademarks statutory protection. A benefit of having a ‘well-known Trademark’ is the ability to prevent registration of the Trademark in any class of goods/services. On the contrary, ‘reputable marks’ are only mentioned as a prerequisite for Trademark infringement in Section 29(4)(c) of the Trademark Act.
The Hon’ble Court has rightly held by that taking into consideration the evidence on record and the reputation held by the impugned marks. The Court by passing this judgement has rightly indicated that a mark does not need to be “well-known,” but it must have a reputation in India. By distinguishing between ‘well-known’ marks and ‘marks with repute’ in this case, the Court has inadvertently suggested that the two phrases should not be used interchangeably because they serve two separate functions under the Act.
– Team AMLEGALS assisted by Ms. Ayushi Udeshi (Intern)
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