Milaap Social Ventures India Pvt. Ltd. vs. Google India Pvt. Ltd.

Introduction

The plaintiff filed a lawsuit for an injunction to stop the defendants and respondents from using the trademark “MILAAP” illegally. The petitioners/plaintiffs in the lawsuit assert that they registered a trademark application for the registration of their mark after incorporating their office in Singapore and then in India. According to the plaint, the petitioners first learned that respondent No. 2 was utilizing their trademark, “MILAAP,” to direct visitors to a website that respondent No. 1 had created and constructed. Therefore, the petitioners claimed that they were forced to stop passing off their trademark and to send a cease and desist order to respondent No. 2 against utilizing their mark as a key phrase.

Trademark case of google & Milap social[Image  Sources : iStock]

According to the respondents’ thorough objections, the plaintiffs want to turn the passing-off application into an infringement lawsuit. The respondents further argued that there is an important distinction between a common law action for passing off and a statutory lawsuit brought under the Trade Marks Act for infringement. As a result, the respondents argued that even though trademark registration is granted pending suit, the current lawsuit cannot be changed into a statutory lawsuit for infringement.

However, the trial judge rejected the application and refused to provide the relief after hearing the arguments. The application was turned down by the prestigious court even after the amendment. The decision was justified on the grounds that merely including a new claim and a suggested change would not create a compelling argument.

The knowledgeable attorney for the petitioners cited A. Abdul Karim Sahib vs. A. Shanmugha Mudaliar and contended that due to the supervening event of trademark registration, the court can take cognizance of the fact and can grant the alteration requested in the interest of justice. The argument was that the Madras High Court had ruled in a similar instance that the legal theory underlying passing off and trademark infringement share the same essential principles. Nonetheless, an action for passing off can readily be expanded into an action for infringement and vice versa, both in terms of substance and impact.

The case Anglo Dutch Colour & Varnishing Works Ltd. Vs. Indian Trading House was also cited, in which it was determined that even if the proposed amendment adds a new cause of action, that may not in and of itself require a new trial and that cannot be a reason to refuse amendment because the suit was initially filed for passing off, and an amendment would not have the effect of changing the suit from one character into another. The plaintiff argued that the hon’ble judge misinterpreted the circumstances and made statements based on false information.

Contrarily, the knowledgeable attorney representing the defendants cited Maya Appliances (P) Ltd. vs. Urooj Ahmed Lords Enterprises (India) and argued that the plaintiffs could not change the nature of the lawsuit from a common law remedy to one brought under the Trade Marks Act. It was argued that the learned Judge was right in denying the application because there is a clear difference between the reliefs sought under common law and one under the Trade Mark Act, and the bases for both reliefs are entirely different.

Additionally, learned counsel strongly disagreed with the relief requested in the amended application. It was asserted that a “registered trademark” is one that is on the register and is still in use, citing Section 2(w) of the Trade Marks Act, which defines “registered trade mark”. It is obvious that the Trade Marks Act’s Section 134(1)(c) read in conjunction with Section 20 of the CPC will apply when a trademark has not yet been registered and if a lawsuit is being brought over a trademark that has not yet been registered. As a result, the claim of trademark infringement would only be admissible if the trademark was registered, legitimately included on the register, and a right was granted in accordance with Section 28 of the Act.

Analysis

The petitioners’ trademark “MILAAP” has been the subject of a lawsuit by the plaintiffs seeking a simple injunction prohibiting the respondents from improperly and unlawfully utilizing it. The plaintiffs have explicitly stated in the plaint that the authorities are now considering their application for registration.

The defendants are opposing this application on the grounds that it adds a new cause of action that arose after the lawsuit was filed and, as a result, if it were to be approved, it would seriously infringe on the rights of the defendants.

When a trademark is not registered, a user of the trademark may file a passing-off lawsuit. The reality is that the plaintiffs have asserted that they have suffered as a result of the defendants passing on similar goods in an unfair manner as the plaintiffs. After the trademark is registered, a lawsuit for infringement on the same principle can be filed. If the defendants’ argument is accepted and the plaintiffs are forced to file a second lawsuit, it will only result in a multiplicity of actions between the parties, which is something that should be avoided. The defendants have failed to persuade the court of the reasons why the proposed modification cannot be considered in the current lawsuit. The fact that a passing off lawsuit is subject to common law and a trademark infringement lawsuit is subject to a specific statute does not, by itself, constitute a reason to deny the plaintiffs’ request to amend their complaint.

If the plaintiffs are not barred from bringing a new lawsuit, the court should always rule in their favour, apply its judicial discretion, accept all changes, consolidate all related disputes, and decide the matter on its merits. The learned Judge ignores all these crucial factors. The entire strategy is seen to be rather shallow. As a result, the challenged impugned order cannot stand.

Conclusion

The learned Judge has not considered whether the requested revision is deemed to be frivolous or raises a strong defence. The challenged impugned order cannot stand because the learned Judge rejected the application solely on the basis that the plaintiffs may file a separate lawsuit. The error made by the learned Judge is seen to be obvious, and this further demonstrates that the pleadings and the law have both been completely misinterpreted. The Court further determined that the learned Judge’s assessment of the supporting documentation for the amendment application was flawed, and as a result, the learned Judge’s conclusions in rejecting the application were unavoidably tainted.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• 2022 LiveLaw (Kar) 487, accessible at: https://www.livelaw.in/pdf_upload/487-milaap-social-ventures-india-pvt-ltd-v-google-india-pvt-ltd-23-nov-2022-446885.pdf

Leave a Reply

Categories

Archives

  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010