Estonia-based-Plaintiff submits, Defendants are using an identical mark ‘BOLT’ with an identical color scheme.

Plaintiff: SC has held, when an urgent interim relief is being sought, suit can be filed without resorting to pre-litigation mediation.

Defendants: SC has held, with effect from 20.08.2022, pre-litigation mediation under Section 12A of The Commercial Courts Act, 2015 is mandatory.

_____

TRUTH

“In cases before us, suits do not contemplate ‘urgent interim relief’. As to what should happen in suits which do contemplate ‘urgent interim relief’ or rather meaning of ‘contemplate’ or ‘urgent interim relief’, we need not dwell upon it.“

– Hon’ble Justice K.M. Joseph, M/s. Patil Automation Private Limited v. Rakheja Engineers Private Limited, [Special Leave Petition (Civil) No. 14697 of 2021], 17.08.2022.

_____

Hon’ble Justice Pratibha M. Singh of Hon’ble High Court of Delhi, Bolt Technology OÜ v. Ujoy Technology Private Limited, [I.A. 13529-32/2022 in CS(COMM) 582/2022], 29.08.2022: As per experience seen in intellectual property cases, relief of interim injunction is extremely important. Such matters do not merely involve contesting parties before Court, but also involve interest of customers/consumers of products and services in question. Court is of opinion, Plaintiff would be entitled to seek urgent interim relief in present case. However, it is made clear, whether interim relief, as sought, ought to be granted or not is not being gone into. Court is yet to consider interim injunction on merits.

A perusal of correspondence leaves no doubt, hand of mediation lent by Plaintiff was met with a tight slap.

Defendants stated T-O-D-A-Y, they are willing to explore Delhi High Court Mediation and Conciliation Centre. List for reporting outcome on 12.09.2022.

_____

Defendants are willing to modify their mark to ‘BOLT.EARTH’. Settlement has not fructified. Defendants’ further expansion henceforth shall be by using the mark as suggested today.

Plaintiff however objects and submits, the ‘.DOT’ ought not to be used. This submission can be considered at time of final adjudication of interim injunction on merits.

– Hon’ble Justice Pratibha M. Singh of Hon’ble High Court of Delhi, Bolt Technology OÜ v. Ujoy Technology Private Limited, [I.A. 13529/2022 in CS(COMM) 582/2022], 23.11.2022.

_____

Toyota Jidosha Kabushiki Kaisha v. M/s. Prius Auto Industries Ltd., (2018) 2 SCC 1 is most-authoritative on trans-border reputation and spill-over.

Plaintiff has not, in my opinion, been able to cross Toyota trans-border threshold of goodwill and reputation. Court must not permit large multinational corporations, which have no intent of coming to India, to throttle an Indian company by not permitting it to sell its product in India.

There is no justification, prima facie, for Court to jeopardize Defendant’s market or repute which it has earned, by allowing Petitioner’s application who has, prima facie, no spill-over or percolation of its trans-border reputation.

– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Bolt Technology OÜ v. Ujoy Technology Private Limited, [I.A. 13529/2022 in CS(COMM) 582/2022], 24.02.2023.

_____

A denial of ad-interim injunction by Learned Single Judge on 24.02.2023 has prompted this.

Ruma Pal J in Allergan Inc. v. Milmet Oftho Industries, 1997 SCC OnLine CAL 337 while penning a lucid opinion, which could be described as being truly progressive, held, reputation of a product may precede its introduction and may exist without trade. Supreme Court while affirming in Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 had observed, mere fact of not using a mark in India would be irrelevant if ‘first in world market’. Muralidhar J of our Court in Cadbury UK Limited v. Lotte India Corporation, 2014 SCC OnLine DEL 367 held, reputation need not be ‘local’ and it is not necessary to establish presence or sale. We find, expressions ‘reputation’ and ‘goodwill’ have been used conjunctively or interchangeably [Toyota Jidosha Kabushiki Kaisha v. M/s. Prius Auto Industries Ltd., (2018) 2 SCC 1].

Learned Single Judge holds, mere reputation would not be enough and it would be incumbent to establish significant goodwill. This, in our considered opinion, would not sustain when one bears in shift in legal position. However, Learned Single Judge correctly found, Bolt Technology OÜ failed to meet test of significant and substantial reputational spill over.

Order of Learned Single Judge upheld.

– Hon’ble Judges Yashwant Varma and Dharmesh Sharma of Hon’ble High Court of Delhi, Bolt Technology OÜv. Ujoy Technology Private Limited, [FAO(OS) (COMM) 45/2023], 30.11.2023.