Section 76(3) Trademarks Act| Fact Of Registration Entitles Marks To Be Used As A Trademark And No Injunction Can Be Granted Irrespective Of Infringement- Delhi HC

A Delhi High Court Bench of Justice C Hari Shankar has refused to injunct the defendants from using the word mark "CSM", while granting an injunction against the mark “CERTIFIED SCRUM MASTER” and the logo.

The Court took the view that, "while the defendants cannot be injuncted from using the word mark “CSM”, the plaintiff is entitled to an interlocutory injunction, pending disposal of the suit, against the use, by the defendants as well as all others acting on its behalf, of the mark “CERTIFIED SCRUM MASTER” and the logo".

Counsel Anirudh Bhakhru, among others, appeared for the plaintiff, while Counsel Gagan Gupta appeared for the defendants.

In this case, the plaintiff, who is the registered proprietor of Certification Trade Marks (CTMs) "CERTIFIED SCRUMMASTER," "CSM," and certain device marks, initiated legal action by filing an application under Order 39 Rules 1 and 2 CPC. The plaintiff alleged that the defendants were utilizing marks and logos that closely resembled its own, leading to potential deception. The claim asserted that the impugned marks were being employed for providing identical certification services, thereby increasing the likelihood of confusion among consumers.

In response, the defendants cited Section 76 of the Trade Marks Act, which deals with acts not constituting infringement of CTMs, as part of their defence against the plaintiff's plea for relief.

The Court observed that the opening words of Section 76(3) indicate that it applies in a case “where a certification trade mark is one of two or more trademarks registered under this Act”. In that vein, it was further observed that the words “is one of” are of stellar significance and that they indicate that Section 76(3), in order to apply, does not require both the rival marks to be registered CTMs. In that context, it was further said that, "All that it requires is that both the marks must be registered under the Trade Marks Act. So long as both the marks are registered under the Trade Marks Act, and one of them is a CTM, the fact of registration would entitle each of the said marks to be used as a trademark, and no injunction against such use can be granted, irrespective of whether the mark is, or is not, infringing."

With that background, the Court held that there was no dispute that the defendant was the proprietor of the registered trade mark “CSM”, registered as a word mark, even if the registration is not as a CTM. In light of the same, it was held that, "There can, therefore, be no injunction against the use, by Defendant 1, of “CSM” as a word mark. The plaintiff’s prayer for injunction against use, by the defendants, of the mark “CSM”, as a word mark cannot, therefore, be granted."

However, the Court further clarified that Section 76(3) would not come to the rescue of the defendants “CERTIFIED SCRUM MASTER” or logo marks, as they were not registered in favour of any of the defendants, either as CTMs or as ordinary trade marks.

Observing that the marks were deceptively similar, the Court observed that, "This minuscule distinction makes no difference to the aspect of deceptive similarity and, consequently, of infringement. It is obvious that a person who is familiar with the plaintiff’s CTM “CERTIFIED SCRUMMASTER”, and who comes across the defendants mark, is likely, even if for a fleeting moment, to wonder whether it is not the plaintiff who is providing the said certification. That momentary feeling of wonderment would, by itself and without anything else, suffice to constitute “likelihood of confusion”. The possibility of confusion would only stand enhanced if the person in question recollects the fact that the plaintiff, too, uses a “sun” motif in its mark."

Cause Title: Scrum Alliance Inc. vs Mr Prem Kumar S & Ors.

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