Bombay HC protects Khadi and Village Industries Commission from trademark infringement – India Today

In an earlier litigation, KVIC had withdrawn its suit in 2021 after the association gave an undertaking that it would not sell any ‘KHADI’ product without a certificate from KVIC.

The court ruled that the words ‘KHADI’ and the ‘Charkha’ logo rightfully belonged to KVIC.

By Vidya : The Bombay High Court has restrained a Mumbai-based association from temporarily using the ‘KHADI’ and ‘Charkha’ logo after the Khadi and Village Industries Commission (KVIC) approached the court stating that it was theirs.

The KVIC had come to court against an association named ‘Mumbai Khadi and Village Industries Association’, which was allegedly using the KVIC-registered logos consisting of the word ‘KHADI’ and depiction of the ‘Charkha’ logo in conjunction with its name.

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The KVIC said that this infringed the word mark, label mark and device mark registered in their favour. The infringement was discovered by KVIC in December 2021. Advocate Birendra Saraf, appearing for the KVIC, pointed to the court that this was the second round of litigation between the two parties. At an earlier instance, KVIC had withdrawn its suit in 2021 after the association gave an undertaking in the high court that they would not sell any ‘KHADI’ product without a certificate from KVIC.

The association, on the other hand, argued that the KVIC claims were on the basis of the elaborate certificates of registration for trademark, label mark and device mark, but it was all of no consequence. The association, through its lawyer Venkatesh Dhond, placed on record material in the form of annual reports to show that it was the prior user of the word ‘KHADI’ since they used it from the year 1946.

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However, Justice Manish Pitale noted that the association had approached the KVIC for a certificate to sell ‘KHADI’ products. But the KVIC began receiving complaints that the cloth being sold by the defendant did not contain khadi material. This led to withdrawal of the certificate of the association.

Despite the withdrawal, when the association continued selling products under the name and trademark, KVIC was compelled to file a suit. Justice Pitale even looked at the undertaking of the association in the earlier proceeding and even now, and said that its conduct was “dishonest”.

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The court also noted that the KVIC held the registration for its wordmark KHADI, label mark and device mark, for a plethora of classes and not limited to cloth or textile products. The Court concluded that the marks being used by the association contained the word ‘KHADI’ and the depiction of the ‘Charkha’, which was similar to the registered trademarks of KVIC.

“On the face of it, the association cannot dispute that the prominent, essential, fundamental and substantial features of the registered trademarks of KVIC are copied in the impugned marks of the trust. This would ordinarily satisfy the requirement of demonstrating a prima facie case as regards infringement and passing-off,” the judge opined.

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The judge also said that unless the association is restrained from further indulging in such conduct, KVIC will suffer grave and irreparable loss.

“Prima facie, the KVIC has made out a strong case in its favour for protection of its proprietary rights as regards the registered trademark and the association cannot avoid an interim injunction by relying upon Section 34 of the Trademarks Act,” the Court said.