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

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