While adjudicating prior use disputes, Indian courts have consistently relied on substantial evidence by any claimant of such prior use to establish their status as the first users of a trademark. Courts frequently take conclusive and factual evidence such as registers, records, invoices, and other pertinent documents, into account to support the claims. In a recent case of Stanvac Chemicals India Ltd Vs. Sachin Pandey, the Delhi High Court was presented with a similar dispute concerning the prior use of the trademark “STANVAC” as used by both plaintiff and defendant.
Facts of the case
The plaintiff (Stanvac Chemical India Limited), is a registered proprietor of various marks under different classes, including “STANVAC”. It has been laboriously using the mark ‘STANVAC’ since 1994 for a wide range of products such as aerosol sprays, synthetic greases, ceramic coatings, putties etc. The crux of the Plaintiff’s dispute revolved around the establishment of significant goodwill and market reputation for their products, as evidenced by provided substantial sales figures during 2021-2022.
The defendant (Sachin Pandey), who is a former distributor of the plaintiff, is engaged in the manufacturing and sale of lubricants, aerosols, greases etc. and had applied for the registration of the mark “STANVAC.” Three such applications were filed by the defendant in 2015 on a “proposed to be used” basis. The plaintiff, however, raised concerns about infringement and passing off, leading to a fierce legal battle.
The plaintiff initiated legal action against the defendant, seeking a permanent injunction to restrain them from using the marks “STANVAC, ” “, “Stanvac product No. code Z906 Provar anti track (SP),” and STANVAC 8015 ANTI-TRACK (Z906) or any other mark, identical or deceptively similar thereto.
On June 1, 2023, the court ruled in favour of the plaintiff, stating that they had successfully established a prima facie case for infringement and passing off. Accordingly, the court ordered a notice returnable on 5th September 2023 and restrained the defendant from using the impugned marks until the next hearing date.
The plaintiff filed an application under the Code of Civil Procedure, 1908 (CPC) alleging disobedience by the defendant of the order passed by the Court on 1 June 2023.
The plaintiff argued that the nature of the activities of the plaintiff and the defendant were also allied and cognate, if not identical. Further, it was contended that the defendant had applied for registration of the impugned mark STANVAC in 2015, and no products of the defendant using the said mark were found in the market.
It is important to note that the plaintiff contended that in February 2023, the defendant had participated in a bidding process with the Northern Railway for a product labelled as “Stanvac product No. code Z906 Provar anti track (SP)” which used the disputed mark “STANVAC.” The Plaintiff attempted to communicate with both the Northers Railway and the defendant, asserting its prior registration of identical mark STANVAC, with the priority of use. However, they did not receive a favourable response.
The plaintiff argued that they are the prior registered proprietor of various trademarks including “STANVAC” has been in use since 1994. Additionally, the plaintiff alleges that the defendant has disobeyed the injunction based on two documents presented during the hearing: a) Two purchase orders dated 6 June 2023 and 7 June 2023 were placed on the defendant by the Central Railway. These orders were for 415 contact cleaners of the make “Stanvac Chemicals”, and b) The defendant’s website contains links marked “Get Technical Data Sheet,” which, when clicked, lead to a page providing technical data for a product called “3001 Super Penetrant,” with certain marks (not specified) appearing at the top of the page.
Countering this, the defendant asserted that there has been no reply or dealing by the defendant in any goods bearing the marks subject to the injunction.
The court in its previous order observed that the plaintiff had established a prima facie case of infringement and passing off based on the similarity of the marks and products used by both parties and the fact that their products would be available in the same outlets and cater to the same customer base. Therefore, the court applied the “triple identity test” used in such cases and was satisfied in this case.
For the application filed by the plaintiff under the Code of Civil Procedure, 1908 (CPC) alleging disobedience by the defendant, the court observed that the terms of the injunction were detailed and categorical, restraining the defendant from dealing in goods bearing the specific marks.
The Court determined that neither of the documents presented by the Plaintiff established a case of disobedience of the injunction. There was no evidence that the defendant responded to or supplied goods under those purchase orders using the injuncted marks notwithstanding the fact that they were made to the defendant before the injunction was passed. Regarding the defendant’s website and the link to the “Get Technical Data Sheet,” the Court stated that the bare presence of certain marks at the top of the page does not constitute dealing in products bearing those marks.
Judgment of the Delhi High Court
In the previous order, the court directed the filing of the suit and summoned the defendant, instructing them to submit a written statement within 30 days. The court also set a date of August 2, 2023, before the joint registrar, for the completion of the pleadings and admission and denial of documents. Subsequently, the case would proceed to a case management hearing and further proceedings.
Additionally, the court allowed the plaintiff to file additional documents and granted an exemption to the plaintiff from filing legible copies of any dim or illegible documents within 30 days. The court emphasized that issuing a notice under Order XXXIX Rule 2A of the CPC is a serious matter, as such proceedings are quasi-criminal in nature and related to contempt. However, the court found no basis to issue a notice in the present application, resulting in the dismissal of the plaintiff’s application alleging disobedience of the injunction.