Background
In an appeal filed by the instant delivery app, Blinkit (https://blinkit.com/), the Karnataka High Court has set aside the impugned order passed by the Trial Court, wherein the Appellant, Blinkit, was, prima facie, found to be infringing the mark “BLINKHIT” owned by the Respondent. The respondent claims that they are the registered proprietors of the marks, “BLINKHIT” and “iBLINKHIT” and have been using these marks since 2016. The Trial Court’s temporary injunction was also based on the same.
The appellant-defendant changed their name from Grofers India Pvt. Ltd. to Blink Commerce Pvt. Ltd., in the year 2021. Pursuant to the same, they started using the mark “BLINKIT” for their grocery delivery business.
Facts
The respondent’s arguments rely on the contention that they have been using the mark ‘BLINKHIT’ before the appellant began using the mark ‘BLINKIT’. The order of the trial court has been passed on this basis as well.
The appellant primarily contends that:
- Mere registration of a trademark without use is inconsequential and the respondent cannot squat over the trademark without using it for their business.
- The nature of business activities carried out by the appellant-defendant is entirely different from the ones said to have been covered by the respondent’s trademarks.
- The court’s attention was drawn to Section 17 of the Trademarks Act, 1999 in order to point out that registration of the composite mark/device mark BLINKHIT/ iBLINKHIT, would not confer rights in favor of the respondent/plaintiff over the individual mark forming part thereof and in the absence of anything to show that the same was distinctive, the respondent would not be entitled to an order of temporary injunction.
- The trial court failed to appreciate that the appellant’s mark was visually, structurally, conceptually, and phonetically different from the respondents. Consequently, there is no room for deception/confusion.
Judgement
The court held that merely obtaining a registration of the trademark by the respondent cannot be made the basis to grant a temporary injunction. It must also be seen as to who holds better common law rights.
The court noted that the nature of business alleged to be carried out by the plaintiff and the respondent is completely different.
Additionally, the court also examined the balance sheet and profit loss accounts statement of the respondent to note that there were no income/revenues accrued to the respondent concluding that ultimately no business was being carried out by the respondent under the aforesaid trademark. No legal or acceptable material placed by the respondent to prove they were using the trademark was found by the court.
Thus, the non-use of the registered trademark, along with the distinct nature of business, is sufficient to conclude that the balance of convenience is in favor of the Appellant. The trial court’s order was overturned, and the appeal has been allowed.
Takeaway
A mere trademark registration without use of the trademark does not grant the proprietor any statutory rights and the same cannot be a ground for seeking injunction.
UPDATE 10.08.2023
A quick update on the Blink Commerce Private Limited v. Blinkhit Private Limited & Anr case: The Appellant Zomato owned Blinkit, heaved a sigh of relief as the Supreme Court rules in their favor and refused to stay the Karnataka High Court’s order in their widely publicised trademark infringement case. In April, the High Court had ordered to set aside a temporary injunction in favor of Blinkhit by a trial court. Blinkhit later challenged the High Court’s order in the Supreme Court. The division bench consisting of Justice Sanjiv Khanna and Justice SVN Bhatti presiding over the matter raised concerns over Blinkhit’s zero turnover as per the records submitted by them.
In its final order on August 04, 2023, the Supreme Court refused to interfere with the order pronounced by the Karnataka High Court. Accordingly, the appeal was dismissed. Zomato recently reported a profit after tax of two crores in quarter ending June for the first time amidst much hype on social media.
Written by Shabnam Khan, Associate Partner, RNA Technology and IP Attorneys
