BPI Sports LLC vs Saurabh Gulati & Anr.

CITATION	2023:DHC:2920 , C.O. (COMM.IPD-TM) 16/2021 & I.A. 13589/2021
DATE OF JUDGEMENT	27 April, 2023
COURT	Delhi High Court
PETITIONER	BPI SPORTS LLC
RESPONDENT	SAURABH GULATI & ANR.
BENCH	HON’BLE MR. JUSTICE C.HARI SHANKAR

INTRODUCTION

To provide insight into how trademark owners can deal with trademark squatting and take action against these squatters, this article discusses a recent judgment of the Hon’ble Delhi High Court in BPI Sports LLC v Saurabh Gulati and Others, which outlined the reliefs that a trademark owner can obtain against trademark squatters under the Trade Marks Act, 1999 (“the Act”). This page highlights jurisdictions with equivalent protections.

FACTS

The Petitioner is a corporation based in Florida, USA. It claims to be a major player in the dietary and nutritional supplement industry.

 The wordmark “BPI SPORTS” and the device mark were registered in favor of the Petitioner on July 15, 2014 and November 28, 2017, respectively, in the United States, in Class 5 for dietary and nutritional supplements.

 The petitioner claims to have used the mark “BPI SPORTS” for dietary and nutritional supplements since January 28th, 2009. According to the claims in the case, the petitioner began using the mark “BPI SPORTS” in India in January 2019. As a result, even as of today, the Petitioner has just four years of experience using the asserted mark “BPI SPORTS”.

Respondent 1 was one of the persons who imported the petitioner’s goods into India under the mark.

Respondent 1 unlawfully filed for and obtained registration in its favor of the word mark BPI SPORTS in Class 5 for health food supplements, dietary supplements, and nutritional supplements. Respondent 1 submitted Application No. 4422891 for the aforementioned registration on January 28, 2020, on a “proposed to be used” basis, and the word mark BPI SPORTS was registered in favor of Respondent 1 with effect from the same day via certificate dated September 26, 2020.

ISSUES

1. Whether the impugned BPI SPORTS mark registered in favour of Respondent 1 should be removed from the register of trademarks?

CONTENTION OF PETITIONER

1. Mr. Alankar Kirpekar speak on behalf of the petitioner, who was accompanied by Mr. Jaspreet Singh Kapur. There is no appearance by the respondents. No response to the petition has been filed by either of the respondents.
2. Mr. Kirpekar claims that fraud pervades the whole process of adopting, using, and acquiring registration for the challenged mark. Respondent 1, the petitioner’s importer, was aware of the petitioner’s mark and its national and worldwide reputation. For this purpose, he has directed my attention to e-mails dated May 23, 2019, from Respondent 1 to the petitioner, as well as the petitioner’s answer to them.
3. Mr. Kirpekar relies on invoices dated January 31, 2019 and March 2, 2019 to show that the petitioner’s BPI SPORTS products were shipped from Hollywood to New Jersey and then transported to Pearl International, Mumbai, the petitioner’s selling agent in India. As a result, he claims that the petitioner had a transborder reputation in India as early as January 2019, which Respondent 1 was aware of.
4. Mr. Kirpekar also showed me the petitioner’s goods listings on Twitter, Instagram, and YouTube. He has also claimed that the petitioner received a “Certificate of Free Sale, Health and Sanitation” from the Florida Department of Agriculture and Consumer Services, which certifies the issuance of an Annual Food Permit for shipment intended for international export to India.
5. Mr. Kirpekar pointed out that, while Respondent 1 applied for registration of the impugned mark in India only on January 28, 2020, on a proposed to be used basis, the petitioner was actually carrying on business in India prior to that date. He reiterates that Respondent 1 was just importing goods under the disputed mark and has no plans to utilize it in India. According to Mr. Kirpekar, Respondent 1 is a trademark squatter who registered the disputed mark in its behalf solely to block the petitioner’s registration of the same mark. Mr. Kirpekar wanted to refer to invoices from pages 33 to 124 of a list of supplemental documents filed by the petitioner under an index dated March 9, 2023, to support their repute.
6. The petitioner has contended in Grounds A and G of the petition that the registration of the impugned BPI SPORTS word mark in favour of Respondent 1 violates the petitioner’s registered trademarks. This is obviously an inaccurate position, as the petitioner has no registration in India for the mark BPI SPORTS, either as a word mark or as a device mark, and infringement under Section 29 of the Trade Marks Act may only occur with a registered trade mark. A litigant who enters the Court must come with clean hands, which includes both factual and legal statements.

CONTENTION OF RESPONDENT

1. In fact, Mr. Kirpekar’s remarks focused primarily on Section 11(3), rather than Sections 11(1) or 11(2). Mr. Kirpekar argues that Respondent 1’s use of the impugned mark aims to misrepresent their products as those of the petitioner. As a result, the respondents’ mark is not eligible for registration.

JUDGEMENT

After hearing both sides, the Honorable Court made some key observations, as listed below:

1. According to the bench, Gulati was aware that the mark was registered in the name of BPI Sports in the United States and that the corporation enjoyed global notoriety with the mark. As a result, the Respondent clearly intended to steal the Petitioner’s mark in order to prevent the company from registering its name in India. This is a textbook case of trademark squatting.
2. The Bench refused to recognize the Petitioner’s relief under subsections (1) to (3) and Section 11 of the Act, but did hold that the aggrieved was entitled to relief under Section 11 (10)(ii), which requires the Registrar to consider the applicant’s or opponent’s bad faith when registering the mark.
3. While accepting the Respondent’s fair attempt at trademark squatting, the Court acknowledged ill faith and considered remedies for the Petitioner.
4. Additionally, the Court clarified the Petitioner’s position regarding infringement of its mark “as the prior adopter and user of the mark which was registered in its favor in the United States.”

Infringement under Section 29 of the Act cannot be considered because the Petitioner has no registration in India for the mark BPI SPORTS, either as a word mark or as a device mark.

ANALYSIS

1. Challenge under Section 11 of the Act:

Though the Petitioner referred to Respondent No. 1 as a ‘trademark squatter’ before the Hon’ble Delhi High Court, it merely maintained that the Respondent No. 1’s Mark violated Sections 11(1), (2), and (3)3 of the Act. The explanation may be obvious, since the Court itself stated that “trademark squatting as an individual phenomenon does not find especial mention in the Trade Marks Act”4. Based on the facts of the case and after underlining the applicable principles, the Court dismissed the Petitioner’s challenge under Section 11 of the Act since no case was made under Subsections (1), (2), and (3) of Section 115.

2. Invoking Section 11(10)(ii) of the Act:

After rejecting the Petitioner’s specific arguments, the Court invoked Section 11(10)(ii)6 of the Act and determined that the Petitioner was entitled to relief under it7. Section 11(10)(ii) requires the Registrar to examine the applicant’s bad faith in registering a trademark. Though the provision is limited and does not state that the existence of bad faith would disentitle the applicant from registration, the Court interpreted the provisions purposively and determined that its intent is clearly to disentitle registration of a mark whose request for registration is tainted by bad faith.

After discussing several meanings of ‘bad faith,’ the Court concluded that trade mark squatting would undoubtedly constitute ‘bad faith’ under Section 11(10)(ii) of the Act. The Court then applied the preceding to the behavior of Respondent No. 1, noting that it had engaged in the ‘textbook definition of trademark squatting’. The Court took note of the fact that Respondent No. 1 was the importer of Petitioner’s goods and later registered the Mark in its own name, presumably to capitalize on the Petitioner’s reputation with respect to the mark.

3. Relief pursuant to Section 57(2) of the Act:

With the foregoing findings, the Court determined that, while the Petitioner was not entitled to relief on the grounds claimed, because the evidence demonstrated that Respondent No. 1 had adopted the Mark in bad faith, the Mark should be removed from the register of trade marks under Section 11(10)(ii) of the Act. The Court ruled that as the facts in the petition were not presented to the Registrar of Trade Marks, the case falls within the category of “wrongly remaining on the register” under Section 57(2) of the Act.

CONCLUSION

The above-mentioned judgment of the Hon’ble Delhi High Court demonstrates the Indian judiciary’s dedication to taking a purposeful approach to keeping up with times. This decision establishes a precedent by precisely detailing how a legitimate trademark owner can safeguard its rights against trademark squatters, as well as identifying the principles under which it can do so. The verdict not only provides a roadmap for trade mark owners to protect their interests, but also strengthens India’s place in the league of nations offering strong intellectual property rights.

REFERENCES

https://indiankanoon.org/doc/142217829/

https://markshield.in/bpi-sports-llc-v-saurabh-gulati-anr/

Written by Shreya Mohanty an intern under legal vidhiya

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