In the case of Chasvinder Singh v. M/s Swiss Auto Pvt. Ltd. & Ors., the Delhi High Court dealt with a trademark dispute between two brothers over the use of the “SAP SWISS” mark. The appellant, Chasvinder Singh, who is the registered proprietor of the trademark “SAP SWISS,” filed the suit seeking a permanent injunction to restrain the respondents, including his brother, from using the marks “SAP SWISS,” “SWISS,” “SSS SWISS,” and related trademarks in the automotive sector.
The Family Dispute
The dispute between the family members arose from the use of these trademarks by M/S Swiss Auto Pvt. Ltd., a company co-founded by the appellant and respondent. The appellant initially permitted the use of the “SAP SWISS” mark under a License Agreement entered into in 2007, which allowed the respondents to use the trademark for certain automotive products, such as wiring harnesses and blinkers. This agreement expired in 2012, but the respondents continued using the trademarks, leading the appellant to file a suit in 2016 for trademark infringement, passing off, and damages.
Respondent’s Defence
In their defense, the respondents claimed that the trademarks in question were family assets, governed by a Family Settlement agreement from 2014. They contended that, as per the settlement, they were entitled to use the trademarks for certain automotive products.
Appellant’s Denial
The appellant, however, denied that a final, binding family settlement had been reached concerning the trademarks, asserting that the trademarks were his personal property and that no formal transfer had taken place.
Single Judge’s Order
The Single Judge, in an earlier order granted an interim injunction against the appellant, restraining him from using the “SAP SWISS” mark for specific products, including automotive wiring, harnesses, blinkers, and side mirrors. The judge reasoned that the respondents had been using the mark for these products and that the appellant was not actively manufacturing them at the time. This led to the appellant filing this appeal against the interim order.
Division Bench’s Decision
The Division Bench found that the Single Judge had failed to properly evaluate the appellant’s rights as the registered owner of the trademarks. The court stated that under the Trademarks Act, any assignment of a registered trademark must be in writing and that no formal agreement transferring the rights to the respondents had been executed. The court also noted that the License Agreement between the parties, which expired in 2012, acknowledged the appellant’s ownership of the “SAP SWISS” trademark and required the respondents to pay charges for its use, undermining their claim that the trademarks were family property.
The court further held that while family settlements can cover various types of property, the respondents had failed to establish a prima facie case that the trademarks belonged to the family’s Hindu Undivided Family (HUF) property or that the appellant had agreed to assign the marks as part of any settlement. Moreover, no concrete evidence was provided to show that a concluded family settlement specifically included the transfer of trademark rights.
Given the absence of any binding agreement or assignment, the court ruled in favor of the appellant. The interim order restraining the Appellant from using the “SAP SWISS” trademark for automotive products was therefore set aside. The court reaffirmed the appellant’s rights as the registered proprietor of the trademarks and held that the respondents had no legal basis to continue using the marks after the termination of the License Agreement.
The appeal was thus allowed, restoring the appellant’s rights to the exclusive use of the “SAP SWISS” trademarks.
Citation: Chasvinder Singh v. M/S Swiss Auto Pvt. Ltd. & Ors., FAO(OS) (COMM) 311/2018 (H.C. Delhi Aug. 30, 2024). Available at: https://indiankanoon.org/doc/183010039/, Visited on: 06/10/2024.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: contact@bananaip.com or 91-80-26860414/24/34.
