Blink Commerce Pvt. Ltd. (BCPL) filed the instant appeal before the Karnataka High Court against the impugned order passed in 2022. The Trial Court had allowed an application filed by Blinkhit Pvt. Ltd, seeking a temporary injunction restraining BCPL from infringing the trade name “Blinkhit” by using the infringing mark “Blinkit.”

A suit for permanent injunction was instituted by the respondent, who claimed that they had been carrying their business by using the mark “Blinkhit” since 2016. In 2021, the appellant, previously named Grofers India Pvt. Ltd., sought to change its name to Blink Commerce Pvt. Ltd., pursuant to which it started carrying out business under the name “Blinkit”. The respondent claimed that their trademark had been thus infringed.

The court, while addressing the impugned order, gave the decision in favour of the appellant by applying the doctrine of the balance of convenience.

SUBMISSIONS BY THE APPELLANT

In pursuance of the appeal, the appellant made the following submissions:

  • Mere registration without use is of no consequence, and the respondent is not entitled to squat on the aforesaid trademark without actually using or utilizing the same to carry out a business, that had not been carried on by the respondent since the date of the alleged registration of the marks.
  • The nature of business carried out by the appellant and defendant were very different from each other. Hence, there exists no case for trademark infringement.
  • It was contended that the trial court had erred in giving out the order and failed to consider the visual, conceptual, and phonetical difference between the appellant’s mark and the respondent’s mark.

THE CONCEPT OF BALANCE OF CONVENIENCE

Balance of convenience refers to the relative merits of the case of the parties, the computation of loss suffered by the parties, and whether the parties have registered the trademark before filing the suit. Under the Indian context, the balance of convenience is decided on a relative case-to-case basis, comparing which party shall suffer a greater hardship in the infringement of the trademark and if the injury caused is irreparable to the concerned business. The injury in question can be monetary, loss of goodwill, occupational, etc. The parties involved have to provide prime facie existence of a case and balance of convenience.

Balance of convenience is contingent on multiple facets such as, the nature of business of the parties, and the product of which the trademark has been infringed. If the nature of business is critical, the court shall allow the use of the trademark as in the Cutis Biotech Sole v. Serum Institute of India Pvt. Ltd.[1] The product in question here was the state’s distribution of the Covishield vaccine. The plaintiff and the defendant had registered for the trademark of the word “Covishield” for a dietary supplement and a vaccine, respectively. Common law principles were used in adjudicating the case, which mentioned the different uses of the products, the importance of the vaccine to prevent further Covid-19 infection, the different administration of the products as the vaccine shall not be available as an over-the-counter medication, etc. Due to the instability of the situation, the court decided that the balance of convenience was tilted towards Serum Institute to prevent confusion among the common population.

JUDGEMENT

Perusing the facts and contentions presented by the parties, the Court noted that the Trial Court had passed its impugned order on the basis of the fact, that the respondent had obtained its mark “Blinkhit/iBlinkhit” much earlier than the appellant had started using “Blinkit” mark. The Court agreed with the contention raised by the appellant that mere registration of a mark cannot be construed as a document of title.

The Court further noted the appellant’s contention that the respondent has not utilized its trademark registered in 2016 till the date of filing the suit, and considered the balance sheets and profit/loss account statements of the respondent, to point out that the respondent was neither carrying out any business using the name “Blinkhit” not generating any income from its usage. The Court further pointed out, that the respondents failed to provide any acceptable material to rebut this contention. The High Court further pointed out that the material on records clearly shows that the nature of business carried out by the appellant and respondent is completely different, which is why, merely obtaining registration of a trademark by the respondent to carry out a completely different business cannot be a ground to grant temporary restraint injunction against the appellant.

Upon re-appreciation of the facts, the High Court was of the opinion that the Trial Court was in error in allowing the respondent’s application for temporary injunction and the impugned order was arbitrary, and contrary to materials placed on record and well-settled legal principles.

CONCLUSION

The key points that were settled in this case are as follows:

  1. Prior Use of Trademark: The Court acknowledged that the respondent had obtained its mark “Blinkhit/iBlinkhit” before the appellant started using the “Blinkit” mark. However, the Court agreed with the appellant’s contention that mere trademark registration does not automatically confer exclusive rights and cannot be treated as a document of title.
  2. Non-Utilization of Registered Trademark: The Court noted the appellant’s claim that the respondent had not utilized its registered trademark “Blinkhit” since its registration in 2016 up until the date of filing the suit. The Court examined the balance sheets and profit/loss account statements of the respondent and found that there was no evidence of the respondent conducting any business or generating income using the “Blinkhit” mark. The Court also observed that the respondent failed to provide any satisfactory material to counter this claim.
  3. Difference in Nature of Business: The Court further emphasized that the nature of business carried out by the appellant and respondent was completely different. It highlighted that the respondent’s trademark registration was for a business that was unrelated to the appellant’s business. Therefore, obtaining a trademark for a different business cannot be a valid ground for granting a temporary injunction against the appellant.

Applying the balance of convenience test and on re-evaluation of the facts and the relevant legal principles, the High Court determined that the Trial Court’s decision to grant the temporary injunction in favour of the respondent was incorrect and not supported by the materials on record. Consequently, the High Court concluded that the impugned order was arbitrary and in contravention of established legal principles. As a result, the High Court overturned the Trial Court’s decision and rejected the respondent’s application for temporary injunction.

[1] Commercial Suit No.1/2021.

Author – Shyamli Shukla (Associate)

Co-Author – Mehul Raj (Intern)