IA No. 8773 of 2020 in CS (Comm) No. 406 of 2020
Date of decision: 21st March, 2023
- Plaintiff No. 2, founder of Plaintiff No. 1 was registered proprietor of the device mark/logo comprising the letter ‘W’ in a circle and the word ‘WORKNEST’ below it in Class 35 and had a pending application in Class 36.
- Plaintiff had filed the present suit seeking injunction against the Defendant from using the mark ‘WORKNESTS’.
- The present summary is of a decision on the interim application filed by the Plaintiff seeking a temporary injunction.
- The registration of the Plaintiff was operative from 16th June, 2018, i.e. date of application.
- Plaintiffs have spent over 5 crores in developing co-working spaces under the name ‘WORKNEST’.
- Plaintiffs created a website www.worknest.co.in on 21st April, 2018
- Defendant is into identical business activity of lending co-working spaces.
- Director of Defendant No. 1 on 8th January, 2018, adopted the mark ‘WORKNESTS’ with the logo.
- Defendants have been using the mark ‘WORKNESTS’ since September, 2018 i.e., prior to Plaintiffs’ use of their device mark.
- The earliest document indicating use of Plaintiffs’ registered mark is the Office Agreement dated 28th January, 2019.
- Plaintiff has purposely not produced their balance sheet for the financial year 2018-19, which alone could illustrate the commercial use and quantum of business conducted in the said year.
- Plaintiffs’ GST registration is dated 11th January, 2019.
- Defendants are exclusively conducting their business in Kolkata and do not intend to extend business operations beyond the States of Orissa, Assam and West Bengal. Whereas, Plaintiffs do not have any presence outside Noida, UP. Hence, no prejudice is being caused to Plaintiffs.
- Plaintiffs’ registration dates back to 16th June, 2018. To raise a defence of prior user, the Defendants have to show use of the mark before the said date.
- ‘WORKNEST’ is the significant and indispensable component of Plaintiff’s registered mark, which makes the contested mark to be deceptively similar/ identical thereto.
- Section 34 of the Trade Marks Act, 1999 begins with a non obstante clause and provides for defence, if any person has been continuously using a trademark that is identical with or nearly resembles the registered proprietor’s trademark, from a date prior to the use of the registered proprietor’s mark in relation to those goods or services, or the date of registration of the registered proprietor’s mark in respect of those goods or services, ‘whichever is earlier’. The relevant date for the purpose of establishing prior use in the present case would be the ‘date of registration’ of the mark and not when the Plaintiff actually started using it.
- Thus, for proving prior use it is incumbent upon Defendants to satisfy usage before 16th June, 2018 (Plaintiffs’ registration date). On this count, they have failed as admittedly Defendants’ use commenced from September, 2018, and not anytime earlier.
- Defendants’ contention that Plaintiffs did not have an intention to use the mark after filing an application, as they did not put the same to immediate commercial use would not be enough to defeat Plaintiffs’ statutory rights emanating from registration. If Defendants’ case is accepted, it would render the concept of proposed-to-be used registrations envisaged under Section 18 redundant.
- The contention that Defendants’ use does not harm or injure Plaintiffs as Defendants are based in Kolkata is misconceived. Registration in favour of Plaintiff is not confined to any particular area/ State, and solely because Plaintiffs are currently operating in Noida, UP, the Court cannot restrict the ambit of their vested rights and impede expansion of future business activities.
Temporary Injunction was granted against the Defendants.