Beiersdorf A.G V. Ajay Sukhwani and Anr. - Delhi High Court Judgement answers some of the FAQs in TM Dispute

Recently, I came across a judgment passed by the Hon'ble Delhi HC in the Beiersdorf AG (owner of "Nivea") V. Ajay Sukhani and Anr., which perhaps, settles the legal position (at least for the time being) on some of the most often encountered TM disputes.

Facts

"Nivea" is a world renowned brand in the toiletries business (Class 3) and is owned by the Beiersdorf AG of Germany and has been registered in Germany since 1905. Ajay Sukhani (partner) runs an educational consultancy firm under the name and title M/s. Nivea International and also owned the domain name http://www.niveainternational.com/.

Beiersdorf filed a complaint with ICANN for transfer of the above said domain name under the Uniform Domain Name Dispute Resolution Policy and an order was passed by against Beirsdorf rejecting its complaint. Beiersdorf filed a suit for passing off and restraining M/s Nivea International from using a similar or deceptively similar trade mark and domain name as that of Beiersdorf.

Held

While granting the prayers of Beiersdorf and injuncting M/s. Nivea International; the Hon'ble Delhi HC has ruled as follows;

1. On the issue of Res Judicata arising out of the decision of ICANN; Finality is not attached to the decision of the administrative panel. For res judicata to apply, the decision between the parties should have attained finality. Civil suit is maintainable before and after administrative proceedings. It is also not possible to accept the contentions of the Defendants that the decision of the administrative panel is an award.
2. Plaintiff enjoys goodwill and the word "Nivea" is recognised and accepted by the general public as associated with the Plaintiff.
3. To succeed in a suit for passing off, it is not necessary that both parties should be in the same line of business. The test is not whether the parties are in the same or connected line of business but whether there is likelihood of confusion or the Defendant has tried to mislead.
4. Actual damage need not be proved. Possibility of damage is enough.
5. When there is a dishonesty or fraud in the initial adoption of trade name, plea of laches and delay normally is rejected. If the initial adoption itself is mala fide and tainted, it does not become valid and legal with passage of time.