Resolution of trademark infringement dispute by Mediation- Delhi High Court Mediation Centre
GrabOn, a Hyderabad based startup running an online marketplace for coupons and deals recently filed a suit for trademark infringement before the Delhi High Court, against Bengaluru based startup GrabOnRent, running another online marketplace, providing furniture for rent. However, the parties entered into a settlement agreement before the Delhi High Court Mediation and Conciliation Centre (‘Mediation Centre”) and a settlement was arrived at.
The grounds of the suit were that GrabOnRent was misusing the goodwill associated with GrabOn’s business and the similarity of the names ‘GrabOn’ and ‘GrabOnRent’ was causing confusion to the consumers. As a result of such confusion, consumers of GrabOnRent were writing negative reviews and feedback and attributing the same to GrabOn instead.
The terms of the settlement agreement before the Mediation Centre is as follows:
- GrabOnRent would place a disclaimer on every page of their website and the mobile app, specifically stating that they had no affiliation with GrabOn.
- GrabOnRent would destroy all articles owned by it bearing its mark such as visiting cards, labels, and any merchandise, which was deceptively similar to GrabOn’s mark.
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In cases of trademark infringement, the usual mode of resolution is by way of filing a civil suit under Section 134 of the Trademarks Act, 1999. However, in some instances, after instituting a civil suit before the court, the parties have resolved the dispute by way of executing a settlement agreement before the court’s mediation centre. Even in case of the resolution of pending matters before the Controller General of Patent Designs & Trade Marks, in order to reduce pendency, a public notice was issued in 2016, to opt for mediation and conciliation proceedings.
In the case of The British Broadcasting Corporation v. Kuldeep Singh Kalra & Ors. (2017), instituted before the Delhi High Court, the parties had resolved the dispute in respect of a trademark infringement suit, by way of a settlement agreement executed before the Mediation Centre.
There exists an international framework for the resolution of domain name disputes known as the Uniform Domain Name Dispute Resolution Policy formulated and effected in 1999 by the World Intellectual Property Organisation (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN). This policy provides for the resolution of such disputes by way of arbitration, ensuring that these disputes are not hit by the geographical limitations of the litigation processes across the world. Such cases are usually resolved within a period of 2 months, using the online mode and charging a minimal fee. In response to the UDRP, the .IN Dispute Resolution Policy (.INDRP) was formulated by the .IN Registry in 2000 for resolving domain name disputes in India by arbitration. However, these are autonomous organizations, lacking the powers of courts and greatly limiting the remedies to cancellation and transfer of the domain name (in case of cyber squatting).
Though there exists a framework for the resolution of domain name trademark disputes by alternative means of dispute resolution (“ADR”), other trademark disputes continue to be dealt by the courts, resulting in losing out on the potential benefits of ADR. The aspects of time-bound resolution and confidentiality that are associated with ADR would be quite beneficial to businesses, particularly in this fast-moving economy. Bringing an amendment to the Trademarks Act, 1999, similar to the Consumer Protection Act, 2019, to include provisions for the reference of such disputes to mediation, would be a step in the direction of the benefit of businesses. This may ensure that resolution of such disputes by mediation are not anomalies.
Disclaimer: This post has been prepared for informational purposes only. The information/or observations contained in this post does not constitute legal advice and should not be acted upon in any specific situation without seeking proper legal advice from a practicing attorney.