BEYOND BORDERS: THE JOURNEY OF THE 'MOLTY' MARK

The Hon’ble High Court of Delhi in the case of Master Enterprises Pvt. Ltd. v. Jay Kay Coir Foam Pvt. Ltd. has directed the cancellation of the Defendant’s "MOLTY" trade mark registration, affirming the Plaintiff’s superior rights and protecting its goodwill beyond borders.

Background:

Master Enterprises Pvt. Ltd. (the Plaintiff), a well-established company based in Pakistan, filed a lawsuit seeking the cancellation of the "MOLTY" trade mark registered by Jay Kay Coir Foam Pvt. Ltd. (the Defendant). The Plaintiff had been using the "MOLTY" mark since 1981 in connection with its products, which included synthetic foam, rigid foam (rubber), and various rubber-based materials such as insulation and padding for mattresses. The Plaintiff asserted that it had developed substantial goodwill and a strong reputation. On the other hand, the Defendant claimed to have adopted the mark in 1995, though they failed to provide adequate evidence of its prior use. The Plaintiff argued that the Defendant’s use of the same mark was likely to cause consumer confusion and amounted to passing off.

Court’s Findings:

• Goodwill Beyond Borders: The Court recognized that the "MOLTY" mark had gained significant goodwill that extended beyond Pakistan, particularly into India, even though the Plaintiff did not have a physical presence there. The Plaintiff had made substantial efforts to promote the mark, including numerous advertisements in magazines and TV commercials between 1997 and 2005. Furthermore, the Plaintiff had filed over 27 trademark registrations across various classes in Pakistan and had even sponsored prominent events like the ICC World Cup in 1996 and the ICC Champions Trophy in 2004. Despite the lack of physical presence, the Court acknowledged the role of modern information technology and the widespread availability of information on the internet, which allowed the Plaintiff’s reputation to reach consumers in India. The Court concluded that the Plaintiff’s reputation had indeed crossed borders, and the Defendant could not claim ignorance of the mark’s widespread recognition.

  
  

• Defendant’s Failure to Prove Prior Use:The Defendant failed to prove that it had used the "MOLTY" mark prior to the Plaintiff’s application in India in 1997. The Defendant presented an invoice from 1998, but the Court found it insufficient to substantiate a claim of bona fide adoption of the mark. In addition, despite the Defendant’s claim that they had been using the mark since 1995, no credible evidence was provided to show any actual usage prior to the Plaintiff’s registration. The invoices filed by the Defendant only mentioned the mark in passing, and the alleged sales figures were not corroborated by any supporting documents. The Court ruled that the Defendant could not benefit from an unsubstantiated claim of long usage or honest concurrent use of the mark.

  
  

Court's Directions:

1. Cancellation of Registration:The Court ordered the cancellation of the Defendant’s "MOLTY" trade mark registration, as the Plaintiff’s goodwill and reputation were established well before the Defendant’s claims.

   
   

2. Affirmation of Reputation Beyond Borders:The Court affirmed that the Plaintiff’s reputation had spread into India, and the Defendant’s use of an identical mark for identical goods was likely to confuse consumers, thereby infringing the Plaintiff’s rights.

   
   

3. Failure of Defendant’s Claims: The Defendant’s failure to provide sufficient evidence of prior use led the Court to rule that the Plaintiff held superior rights to the "MOLTY" mark in India.

   
   

4. Protection of Consumer Interests: The Court highlighted the risk of consumer confusion arising from the overlap in the markets where both the Plaintiff and Defendant operated, emphasizing the need to protect not only the Plaintiff’s reputation but also the interests of consumers.

   
   

Conclusion:

This case underscores the importance of recognizing spill-over reputation in trade mark law, where goodwill can transcend national borders and allow businesses to protect their intellectual property rights internationally. The judgment serves as a reminder to companies operating across multiple jurisdictions to safeguard their trade marks and ensure their reputation is acknowledged and respected globally.

Reference:

 1. C.O. (COMM.IPD-TM) 599/2022