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December 21, 2020

Export From India Constitutes Use Of Trademark Irrespective Of Commercial Sale In India

Author: Sannidhi Mahapatra

In the matter of UFO Contemporary, Inc. v. Creative Kids Wear (India) Pvt. Ltd. & Ors. [CS (Comm) 375/2020], a Single Judge [V. Kameswar Rao, J.] of the High Court of Delhi vide an order dated November 23, 2020, granted an interim injunction against the Defendants from using the mark   or any other mark deceptively similar to Plaintiff’s  mark.

The Plaintiff contended that it has adopted the mark  “UFO” for clothing in the year 1968 and is also the registered proprietor of the mark in Class 25. It was submitted that the Defendants were licensees for the Plaintiff, for manufacturing clothing under the trademark “UFO” in India, from 1970 to 2011. 

In January 2019, on discovering online sale of the Defendant’s products under the mark (hereinafter referred to as impugned mark), which incorporated the Plaintiff’s mark, the Plaintiff sent the Defendants a cease and desist letter. The Defendants agreed to stop using the mark. However, despite repetitive assurances, the Defendants continued to use the impugned mark, which prompted the present suit for infringement and passing off.

The Defendants, on the other hand, argued that the mark is merely an abbreviation for the term “Under Fourteen Only”. It was also contended that the Plaintiff has no locus to file the present suit for injunction, as products under its word mark UFO do not have any commercial presence in the Indian market. It was argued that the Plaintiff’s products are manufactured for the purpose of export to various countries such as Japan, USA, Canada, etc., and not for sale in India.

 The court accepted the Plaintiff’s plea that the adoption of impugned mark by the Defendants is malafide and held that“… the fact that the clothes / garments are being manufactured by putting trademark UFO and exported outside India, the parameters of Section 56 are satisfied inasmuch as there is a Brand in India of the trade mark although goods to be exported from India is deemed to constitute the use of the trade mark in relation to goods. So, it is inconsequential that there is no commercial sale of goods of the plaintiff in India.” 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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