Defendant’s side

The Hon'ble Delhi High Court in its judgement dated January 3, 2013, in the case of M/S Three-
N-Products Pvt. Ltd. vs M/S Kairali Exports and Anr., noted that protection of a generic word
as a trademark requires a greater degree of proof and a lot more effort from the person claiming
trademark rights over the mark.

 The Court held that since the trademark of the Plaintiff i.e. 'AYUR' is generic, it has lower
level of legal protectability. Therefore, the Plaintiff cannot prima facie claim any
proprietorship on the word 'AYUR' per se.
 The Court opined that it is not that a generic or descriptive mark will never have any
legal protectability but the burden of proof on the person claiming distinctness in favor of
a generic or descriptive mark is much higher. The Plaintiff not only would have to show
that the mark adopted by the Plaintiff, because of its extensive use has acquired
distinctness and is identifiable only with the goods of the Plaintiff but also that the
adoption of the mark by the Defendants is identical and deceptively similar to the mark
of the Plaintiff.
 It was held that the Plaintiff was not able to establish a prima facie case in their favor for
grant of an ad-interim injunction. The Court noted that the mere fact that Plaintiff claims
to be a prior adopter or has substantial turnover and has spent substantial amount on
the development is of no consequence.

Thus, an ad-interim injunction was not granted to the Plaintiff.

II = In Steel Authority of India Ltd21(SAIL) in 2014, the Bombay High Court

considered an issue of infringement of trade marks and held that the disputes
were not arbitrable, despite existence of arbitration clause in the contract

II = It is noteworthy that the Supreme Court in the case of A Ayyasamy v. A

Paramasivam while setting out a categories of disputes which are non-
arbitrable and disputes relating to patents, trademark and copyright is one of
them

II= On the other hand, the Bombay High Court in the case of ‘Steel Authority of
India Limited (SAIL) vs. SKS Ispat and Power Limited’ (2016)[iv] has held a
different view while dealing with an application of notice of motion filed by
Defendants under Section 8 of the Act against the damages and permanent
injunction claimed by the Plaintiff for infringement of their registered trademarks.
The application under Section 8 was made relying upon the clauses of the
arbitration agreement governing the matter. However, the Bombay High Court
dismissed the notice of motion on the ground that the infringement as well as
passing off of a trademark as meted out in the suit, were a violation of rights in
rem and therefore, not maintainable to be referred for arbitration.

II- ]