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Roll No.

14055
________________________________________________________________
RAJIV GANDHI NATIONAL UNIVERSITY OF LAW, PUNJAB
9TH SEMESTER CURRICULUM MOOT- 2018

IN THE HON'BLE HIGH COURT OF DELHI


________________________________________________________________
SUIT NO. OF 2018

IN THE MATTER OF:

Marc Inc. ...................................................................................................................Petitioner

V.

Derby Motors Pvt. Ltd. .........................................................................................Respondent


___________________________________________________________________________

SUIT NO. 3456 OF 2018

IN THE MATTER OF:

Marc Inc. ...................................................................................................................Petitioner

V.

YoogleSearch Inc. ..................................................................................................Respondent


___________________________________________________________________________

I.A. NO. 1244 OF 2018

IN THE MATTER OF:

Marc Inc. ...................................................................................................................Petitioner

V.

YoogleSearch Inc. ..................................................................................................Respondent


___________________________________________________________________________

MEMORANDUM SUBMITTED ON BEHALF OF THE


RESPONDENTS
___________________________________________________________________________
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TABLE OF CONTENTS

List of Abbreviations ............................................................................................................... 2

Index of Authorities ................................................................................................................. 3

Statement of Jurisdiction ........................................................................................................ 5

Statement of Facts .................................................................................................................... 6

Issues Raised ............................................................................................................................. 8

SUMMARY OF ARGUMENTS ............................................................................................. 9

ARGUMENTS ADVANCED ................................................................................................ 11

I. The High Court of Delhi does not has jurisdiction to try the present petitions ........ 11

II. Derby Motors is not liable for infringing and passing off trademark of Marc Inc. 13

A. DM is not liable for infringement under the TMA .............................................. 13

B. DM is not liable for passing off his goods as that of the petitioner ..................... 14

III. YoogleSearch is not liable for infringing the trademark of Marc. Inc. .................. 16

IV. The application for interim injunction cannot be granted in the facts and
circumstances of the present case ..................................................................................... 18

A. No prima facie case of infringement by DM and YS ............................................ 18

B. That the Balance of Convenience lies in the favour of DM and YS.................... 18

C. That there will be no irreparable damage/injury to the Petitioner .................... 19

PRAYER ................................................................................................................................. 20

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LIST OF ABBREVIATIONS

Abbreviations Full form


AIR All India Reporter
CPC Code of Civil Procedure, 1908
Del Delhi
Ed. Edition
HC High Court
Hon’ble Honourable
IPAB Intellectual Property Appellate Board
ITA Information Technology Act Ltd.
Ltd. Limited
PTC Patent & Trade Marks Cases
SC Supreme Court
SCC Supreme Court Cases
Sec. Section
TMA Trade Marks Act, 1999
v. Versus

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INDEX OF AUTHORITIES

CASES

1. Consim Info Pvt. Ltd. v. Google India Pvt. Ltd, 2010 Indlaw MAD 2449. ............................ 17

2. Erven Warnick B.V v. J. Townend & Sons(Hull)Ltd., [1979] 2 All ER 927; ......................... 15

3. K.E. Mohammed Aboobacker v. Nanikram Maherchand, (1957) 2 MLJ 573. ....................... 19

4. Laxmikant V. Patel v. Chetanbhat Shah and Another, 2001 Indlaw SC 19796....................... 19

5. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. 1994 Indlaw SC 19..... 19

6. Reckitt & Colman Ltd v Borden Inc., [1990] 1 All E.R. 873. ................................................. 15

7. Shree Nath Heritage Liquor Private Limited and another v. Allied Blender and Distillers
Private Limited, 2015 Indlaw DEL 5658. ................................................................................ 15

8. Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Limited and others, 2017 Indlaw
SC 1100.................................................................................................................................... 16

9. Wander Ltd. v. Antox India Pvt. Ltd., 1990 (Supp) SCC 227. ................................................ 19

10. World Wrestling Entertainment v. Reshma Collection, 2014 (60) PTC 452 (Del). ................ 13

STATUTES

1. The Trade Marks Act, 1999

2. The Code of Civil Procedure, 1908

3. The Information Technology Act, 2000

4. The Delhi High Court Act, 1966

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OTHER AUTHORITIES

1. ASHWANI KR. BANSAL, COMMERCIAL’S LAW OF TRADEMARKS IN INDIA (1st


ed. 2003)

2. HALSBURY’S LAWS OF ENGLAND (4th ed., 2008)

3. J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR


COMPETITION (4th ed. 2012)

4. KERLY, LAW OF TRADE MARKS AND TRADE NAMES (15th ed., 2011)

5. P. NARAYANAN, LAW OF TRADEMARKS AND PASSING OFF (6th ed., 2007)

6. VENKATESWARAN, TRADEMARKS AND PASSING OFF (5th ed., 2010)

WEBSITES

1. www.scconline.com

2. www.westlaw.com

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STATEMENT OF JURISDICTION

The Petitioner in the instant case has approached this Hon’ble High Court under section 134
of the Trade Marks Act, 1999 read with section 5 of the Delhi High Court Act, 1966;
however, the Respondents reserve the right to contest the jurisdiction of this Hon’ble Court.

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STATEMENT OF FACTS

-PARTIES-

1. Marc Inc. (hereinafter “Petitioner”) is a company incorporated under the laws of


Germany in the year 1985 and is renowned for designing and manufacturing cars, motorbikes
and E-Bikes with state of the art technology.

2. Derby Motors Pvt. Ltd. (hereinafter “DM”) is a company incorporated under the
Companies Act, 1956 and also has its registered office in New Delhi. It caters to customers
particularly in the entry-level segment and the company has exclusive showrooms in New
Delhi, Mumbai, Chandigarh and Patiala.

3. YSearch Inc. owns and operates “YoogleSearch.com which is one of the worlds
leading and most widely used Internet Search Engine who earns bulk of its revenue from its
Redlinks service under which a party is listed as a sponsored link when a particular term
referred as Adterm is searched on YoogleSearch.

-REGISTRATION OF TRADEMARKS-

4. In 2012, the petition launched a car in the SUV category with fine state of the art
technology. The USP of the car was its capability to accelerate from 0 to 100 mph in less than
15 seconds. Marc, after conducting several market surveys, decided to adopt the trademark
ZERC for the car. Prior to the launch of the car, Marc obtained registrations for the trademark
ZERC in Class 9 Germany. Marc had also applied for the registration of the ZERC trademark
in India in the year 2017 which was granted in February 2018.

5. In March 2017, Derby Motors launched a car in the entry-level segment under the
trademark Ziron-1. Ziron- 1 was touted to be one of the cheapest cars in the world and was
priced at merely Rs. 1 Lakh. Derby Motors applied for the trademarks Ziron in Cass 1, 3 and
5 in the year 2017 and the trademarks were registered in favour of Derbt Motors in January
2018.

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-CONTROVERSY-

6. In order to capture a wider market, Derby Motors decided to purchase ZERC and
ZIRON as Adterms so that the link for Ziron -1 car appeared as Sponsored Link when a user
searched for either ZERC or ZIRON. In March, 2018, Marc Inc. learnt of the use of ZERC by
Derby Motors as an Adterm and immediately filed a complaint with YoogleSearch asking
them to discontinue the use of ZERC as an Adterm by Derby Motors. YoogleSearch, on
examining that the trademark ZERC was registered in favour of Derby Motors and refused to
interefere in the matter.

7. On learning of Derby Motor’s registration of the trademark ZERC, Marc Inc. filed
rectification proceedings before the Intellectual Property Appellate Board for the removal of
the said registration. The said rectification petition before the Intellectual Property Appellate
Board.

-PRESENT SUIT(S)-

8. Subsequently, Marc Inc. filed a suit in the High Court of Delhi against Derby Motors
for trademark Infringement, passing off, misrepresentation, damages, etc. In the said suit,
Marc Inc. has filed an application praying for interim injunction restraining Derby Motors
from using trademarks ZERC and ZIRON.

9. Derby Motors from has filed an application for the return/rejection of the plaint on the
grounds that an infringement suit against a Registered proprietor of a trademark is not
maintainable and that the Hon’ble High Court of Delhi lacks the jurisdictional to entertain the
suit.

10. Marc Inc. also filed a suit in the High Court of Delhi (being suit No. 3456 of 2018)
against YoogleSearch. Inc for the trademark infringement. In the said suit, Marc Inc. has filed
an application being I.A. No. 1244 of 2018) praying that YSearch Inc. be restrained from
displaying derby Motor’s Sponsored Links on the use of the trademark ZERC and Ziron.

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ISSUES RAISED

-Issue I-

Whether the High Court of Delhi has jurisdiction to try the present petitions?

-Issue II-

Whether Derby Motors is liable for infringing and passing off trademark of Marc Inc.?

-Issue III-

Whether YoogleSearch is liable for infringing the trademark of Marc. Inc.?

-Issue IV-

Whether interim injunction can be granted by this Court?

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SUMMARY OF ARGUMENTS

I. The High Court of Delhi does not has jurisdiction to try the present petitions

1. It is respectfully submitted on behalf of DM and YS that the Hon’ble High Court does
not have jurisdiction to try the present petitions since the petitioner has already filed
rectification proceedings before the Intellectual Property Appellate Board before instituting
the present suit before this Hon’ble Court and section 10 of the CPC and section 124 of the
Trade Mark Act, 1999 bars this court to now take cognizance of the petitioners filed by the
petitioner.

II. Derby Motors is not liable for infringing and passing off trademark of Marc Inc..

2. It is most respectfully submitted that Debry Motors has not infringed the trademark of
Marc. Inc. since both of them are registered proprietors of the impugned trademark ‘ZERC’
and section 28(3) of the Trade Mark Act, 1999 provides that use of trademark one of the two
registered proprietors does not amount to infringement.

3. Further, the use of the impugned trademark does not amount to passing off as there
has been no misrepresentation by the DM and the use of the trademark is to earn benefits out
of its (DM’s) own goodwill and reputation.

III. Yooglesearch is not liable for infringing the trademark of Marc. Inc.

4. It is most respectfully submitted that the purpose of allowing the use of the impugned
trademark as Adterms by DM does not detrimentally affect the distinctive character of the
petitioner’s trademark or affect its reputation negatively. Instead, the use of Adterms under
the Redlinks services allows YS to provide its services free of cost to the public at large
which is covered by “honest practices in industrial or commercial matters” defence under
section 30 of the TMA.
5. Further, YS is protected from liability of any alleged trademark infringement under
section 79 of the ITA since first, it has not itself infringed any trademark and second, it
provides a mechanism for redressal of any complaint for trademark infringement.

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IV. The application for interim injunction cannot be granted in the facts and
circumstances of the present case

6. It is most respectfully submitted that there exists no prima facie case and the balance
of convenience lies in favour of the DM and YS and no irreparable injury is being caused to
the petitioner and hence, the application filed by the Plaintiffs seeking interim injunction
against advertisement of DM products by YS shall be dismissed.

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ARGUMENTS ADVANCED

I. THE HIGH COURT OF DELHI DOES NOT HAS JURISDICTION TO TRY THE PRESENT
PETITIONS

1. The Respondents humbly submit that this Hon’ble Court may be pleased to not take
cognizance of the present suit under section 134 of the Trade Marks Act, 1999 read with
section 5 of the Delhi High Court Act, 1966 since the present suit is hit by section 10 of the
Code of Civil Procedure, 1908 (hereinafter “CPC”) which reads as- “Stay of suit—No Court
shall proceed with the trial of any suit in which the matter in issue is also directly and
substantially in issue in a previously instituted suit between the same parties, or between
parties under whom they or any of them claim litigating under the same title where such suit
is pending in the same or any other Court in India having jurisdiction to grant the relief
claimed, or in any Court beyond the limits of India established or continued by the Central
Government and having like jurisdiction, or before the Supreme Court.”

2. In the present case, Petitioner has already filed rectification proceedings before the
Intellectual Property Appellate Board (hereinafter “IPAB”) before filing the suit before this
Hon’ble Court and section 57(3) of the Trade Mark Act, 1999 (hereinafter “TMA”) which
provides for rectification proceedings, states that “The Tribunal (Appellate Board) may in
any proceedings under this section decide any question that may be necessary or expedient to
decide in connection with the rectification of the register”.

3. It is, therefore, humbly submitted that in light of the already pending proceedings
before the IPAB and the jurisdiction of the IPAB under section 57(3) to award the relief(s)
claimed by the Petitioner, the present suit be stayed by this Hon’ble Court in conformity with
section 10 of the CPC.

4. Further, section 124 of the TMA provides that in any suit for infringement of a
trademark, if the defendant pleads that the complained mark is already registered under the
Trade Mark Act or that the plaintiff’s mark is invalid, and wherein any proceeding for
rectification of the register in relation to the plaintiff’s or the defendant’s trademark is
pending before the IPAB or Registrar, then the suit for infringement shall be stayed pending
the final disposal of such proceedings.

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5. Reliance is placed on Arun Colour Chemicals v. Mithumal Essance Mart1 wherein the
plaintiff had filed a suit for passing off and trademark infringement against the defendant.
The defendant, in turn, claimed that it had registered its own trademark to the plaintiff’s
knowledge. However, at the time the suit for infringement was filed, the plaintiff had already
initiated rectification proceedings against the defendant’s mark before the Registrar. The
court noted that as far as the question of infringement of the plaintiff’s trademark and defence
of the defendant that it has a valid registration of an identical mark in its favour is concerned,
this Court has to await the outcome of the rectification proceedings before deciding those
issues. The final order in the rectification proceedings would then bind the parties and this
Court is required to dispose of the suit in conformity with the same.

1
World Wrestling Entertainment v. Reshma Collection, 2014 (60) PTC 452 (Del).

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II. DERBY MOTORS IS NOT LIABLE FOR INFRINGING AND PASSING OFF TRADEMARK OF
MARC INC.

6. It is humbly submitted that Derby Motors (hereinafter “DM”) is neither (A) liable for
infringement of the petitioner’s trademark ‘ZERC’ under section 29 of the TMA nor (B)
liable for passing off his product as petitioner’s product.

A. DM is not liable for infringement under the TMA

7. It is humbly submitted that section 29 of the TMA provides that a trademark is


infringed by a person who “uses in the course of trade” a mark which is identical with or
deceptively similar to the registered mark in such manner such as to render the “use of the
mark likely to be taken as being used as trademark”, such as is “likely to cause confusion”.

8. In the instant case, two keywords ‘ZERC’ and ‘Ziron’ have been purchased by DM.
Assuming that the word ‘ZERC’ is a registered trademark of petitioner, then also, as regards
the keyword ‘Ziron’, there cannot be any claim for infringement since it is very distinct from
‘ZERC’, both in terms of spelling and phonetics.

9. As regards the use of keyword ‘ZERC’ is concerned, the same is registered in the
name of DM and also the petitioner. Section 28(3) of the TMA is relevant here as it
contemplates a situation where two or more persons are registered proprietors of the
trademarks which are identical with or nearly resemble each other. It, thus, postulates a
situation where same or similar trademark can be registered in favour of more than one
person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to
use of any of those trademarks shall not be deemed to have been acquired by one registrant as
against other registered owner of the trademark (though at the same time they have the same
rights as against third person). Therefore, the use of the keyword ‘ZERC’ by DM does not
amount to infringement since DM itself is a registered proprietor of the impugned trademark.

10. Assuming arguendo that DM is not the registered proprietor of the trademark ‘ZERC’
then also in order to claim infringement by DM, the petition needs to prove that use of word
‘ZERC’ is likely to create confusion in terms of section 29 of the TMA. In Shree Nath

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Heritage Liquor Private Limited v. Allied Blender and Distillers Private Limited2, this
Hon’ble Court notes that “Likelihood of confusion may be proved in many ways, such as:

(a) Through survey evidence;

(b) By showing actual confusion;

(c) Through arguments based on a clear inference arising from a comparison of the marks in
question and the context in which the marks are used;

(d) Under Section 29 of the Trademarks Act, 1999, confusion is presumed if the marks are
identical and are used for identical goods/ services.”

11. In the instant case, it is humbly submitted that neither survey evidence has been
presented nor actual confusion has been shown nor any clear inference can be drawn of
confusion from a comparison of the marks in question and the context in which the marks are
used. The petitioner’s and the respondent’s good are inherently distinct with one being priced
at Rs. 4.5 lakhs and the other at Rs. 1 lakh. Moreover both the goods fall in different classes.
The same reasoning of distinctiveness of goods precludes the presumption under section 29
as aforementioned.

B. DM is not liable for passing off his goods as that of the petitioner

12. It is humbly submitted that the essential characteristics of a passing off action are:
misrepresentation made by a person in the course of trade, made to the prospective
consumers which is calculated to injure the reputation and goodwill of another trader and
causes actual damage to a business or goodwill of the trader by whom the action is brought. 3

13. The aforementioned characteristics have been reiterated in Reckitt & Colman Ltd v.
Borden Inc.4 wherein following test has been laid down for determination of passing-off:

2
Shree Nath Heritage Liquor Private Limited and another v. Allied Blender and Distillers Private Limited, 2015
Indlaw DEL 5658.
3
Erven Warnick B.V v. J. Townend & Sons(Hull)Ltd., [1979] 2 All ER 927; IYENGAR’S, COMMENTARY
ON THE TRADEMARKS ACT 738 (4th ed., 2011).

4
Reckitt & Colman Ltd v Borden Inc., [1990] 1 All E.R. 873.

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i. Goods and services of the plaintiff must enjoy reputation and goodwill, such that they are
distinguished from others in the market;

ii. Misrepresentation of the goods and services from the defendant, either intentional or
unintentional, causing consumers to be confused into drawing an association between such
goods and those of the defendant; and

iii. The plaintiff must suffer damage to such goodwill as a result of the misrepresentation of
the plaintiff and the defendants.

14. In other words, in order to prove and establish an action of passing off, three
ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation and
damages.5

15. It is humbly submitted that the use of Adterm ‘ZERC’ alone does not amount to
misrepresentation. In the entire scheme of things, DM is a registered proprietor of the
trademark ‘ZERC’ and therefore, it has purchased the Adterm ‘ZERC’ on YoogleSearch to
make use of its trademark. DM has reputation and goodwill of its own and by using the
trademark ‘ZERC’, there has been no misrepresentation of goods of the respondent as goods
of the petitioner.

5
Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Limited and others, 2017 Indlaw SC 1100.

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III. YOOGLESEARCH IS NOT LIABLE FOR INFRINGING THE TRADEMARK OF MARC. INC.

16. It is humbly submitted before the Hon’ble Court that the acts of YoogleSearch Inc.
(hereinafter “YS”) do not infringe the petitioner’s trademark. YS merely provides an
advertising service through its search engine YoogleSearch.com which provides Redlinks
service under which party is listed as “Sponsored Link” when a particular term is searched on
the search engine. YS, therefore, is merely engaged in the advertisement services.

17. The present case is very similar to the case of Consim Info Pvt. Ltd. v. Google India
Pvt. Ltd.6 wherein it was alleged that Google committed contributory or ancillary
infringement of several trademarks of the plaintiff by displaying the advertisements of
competitors when consumers searched for the plaintiff‘s trademark. The Court did not find
Google liable as it fell within the ambit of the exception under section 30 of the TMA which
allows advertisements rendered in conformity with “honest practices in industrial or
commercial matters”. It was further held the ingredients for infringement under section
29(8)(b) and (c) were not satisfied i.e., the use of the trademark by Google was not
“detrimental to the distinctive character of the mark or against the reputation of the mark.”

18. In the instant case also, the purpose of allowing the use of the adterms by advertisers
does not detrimentally affect the distinctive character of the petitioner’s trademark or affect
its reputation negatively. Instead, the Redlinks policy allows YS to provide its services free of
cost to the public at large which is covered by “honest practices in industrial or commercial
matters” defence under section 30 of the TMA.

19. Further, YS is an intermediary merely an intermediary u/s 2 (1) (w) of Information


Technology Act, 2000 (hereinafter “ITA”). An intermediary is protected from liability in
terms of section 79(2) (c) of the ITA if “the intermediary observes due diligence while
discharging his duties under this Act and also observes such other guidelines as the Central
Government may prescribe in this behalf.”

20. Under the YS’s Redlinks policy, the duty to not infringe any of the IPR laws is on the
advertisers firstly, the relevant portion of which states-

6
Consim Info Pvt. Ltd. v. Google India Pvt. Ltd, 2010 Indlaw MAD 2449.

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“YoogleSearch strongly recommends Advertisers to conform to intellectual property laws


and we prohibit intellectual property infringement by advertisers. YoogleSearch wishes to
clarify that the sole responsibility for choosing a particular search term as an Adterm and the
text that they choose to use in those advertisements lies with the Advertiser. YoogleSearch
does not examine the Adterm chosen by an Advertiser for its legality under the intellectual
property laws. YoogleSearch disclaims all liability for infringement of any intellectual
property laws by an Advertiser”

21. While the duty to not infringe the IPR laws in on the Advertisers, the YS has gone one
step ahead and further strengthened its due diligence obligation as contemplated under
section 79 of the ITA by enacting the following in its Redlinks Polciy:

“However, on receiving a complaint by a trademark owner, YoogleSearch may agree to


examine whether the Adterm amounts to infringement of the trademark owner’s rights. If on
examining the complaint, YoogleSearch adjudicates that the use of the Adterm amounts to
trademark infringement, YoogleSearch may discontinue the display of the relevant Sponsored
Links unless the Advertiser institutes appropriate legal proceedings before an appropriate
Court within 30 days from such decision by YoogleSearch and YoogleSearch is intimated of
such legal proceedings.”

22. It is worthwhile to mention that it is not possible for any online search engine to
examine the compliance all the Adterms with the applicable IPR laws in different countries
which the advertisers wish to purchase and therefore, only after a complaint is made that YS
can check the compliance of the relevant Adterms with the applicable IPR laws. In the instant
case too, on the complaint by the petitioner, YS immediately undertook steps to ascertain the
validity of the complaints, however, the same did not yield a favorable result for the
complainant (petitioner herein)

23. Therefore, YS is protected from liability of any alleged trademark infringement under
section 79 of the ITA since first, it has not itself infringed any trademark and second, it
provides a mechanism for redressal of any complaint for trademark infringement.

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IV. THE APPLICATION FOR INTERIM INJUNCTION CANNOT BE GRANTED IN THE FACTS AND
CIRCUMSTANCES OF THE PRESENT CASE

24. It is humbly submitted that in order to ascertain that whether an interim injunction is
appropriate to certain sets of facts, the classical trinity test is conducted by the courts assuring
(A) a prima facie case, (B) balance of convenience and (C) irreparable injury to the plaintiff.7

A. No prima facie case of infringement by DM and YS

25. In Wander Ltd. v. Antox India Pvt. Ltd.8 the Hon’ble Apex Court inter alia held that
in order to establish a prima facie case, it is incumbent upon the plaintiff to show that “nature
of activity & goods of plaintiff & defendant is similar and “use of trademark/trade-name is
likely to create confusion in public mind”.

26. The nature of activity of the petitioner and the DM, and the petitioner and the YS is
completely different. While petitioner is engaged in manufacture and sale of cars of premium
cars, DM is engaged in making cheap entry level cars and YS is an online search engine.
Moreover, there is no likelihood of confusion amongst the consumers as the consumers can
easily distinguish between the products of both DM and petitioner, since one is an entry level
segment car and is priced at 1 lakh, and the other is a premium sedan amounting to 4.5 lakhs.
YS on the other hand provides services for researching on Internet.

B. That the Balance of Convenience lies in the favour of DM and YS.

27. The Balance of Convenience test has been elucidated by the Hon’ble Madras High
Court in K.E. Mohammed Aboobacker v. Nanikram Maherchand9 which has subsequently
been followed by Hon’ble Supreme Court in Power Control Appliances and Others v. Sumeet
Machines Pvt. Ltd10 as follows: “the Court in granting or refusing the interim injunction is
guided principally by the balance of convenience that is by the relative amount of damage
which seems likely to result if the injunction is granted and the plaintiff ultimately fails or if
it is refused and he ultimately succeeds”.

7
Laxmikant V. Patel v. Chetanbhat Shah and Another, 2001 Indlaw SC 19796.

8
Wander Ltd. v. Antox India Pvt. Ltd., 1990 (Supp) SCC 227.

9
K.E. Mohammed Aboobacker v. Nanikram Maherchand, (1957) 2 MLJ 573.

10
Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. 1994 Indlaw SC 19.

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28. It is humbly submitted that in the instant case, the balance of convenience lies in the
favour of DM and YS and against the petitioner since if the interim injunction is granted to
the petitioner then both DM and YS will suffer losses as DM has already paid a fixed sum for
availing the facility of using the impugned Adterm ‘ZERC’ and YS will suffer loss of
revenue which is earned on per click basis on the sponsored link, and petitioner will not be
much affected if he ultimately loses compared to on the other hand if interim injunction is not
granted then also the petitioner does not incur any losses/damages as its website is still
displayed on searching the impugned Adterm and as already mentioned the use of the Adterm
by DM and YS does not affect the reputation or result in damages to the petitioner.

29. In other words, it is DM and YS who will be suffering losses if the interim injunction
is granted and petitioner will not be affected even if the interim injunction claimed by it is
dismissed.

C. That there will be no irreparable damage/injury to the Petitioner

30. It is humbly submitted that petitioner is not suffering any losses due to the alleged
infringement by DM and YS as its website is displayed when the relevant Adterm is searched
on YS’s search engine and use of the Adterm by DM does not eat into the market of the
petitioner which, as mentioned above, has preference for premium sedan cars and not entry
level cheap cars provided by DM.

31. Therefore, there exists no prima facie case and the balance of convenience lies in
favour of the DM and YS and no irreparable injury is being caused to the petitioner and
hence, the application filed by the Plaintiffs seeking interim injunction against advertisement
of DM products by YS shall be dismissed.

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PRAYER

Wherefore in the light of the facts of the case, arguments advanced and authorities cited it is
humbly prayed that this Hon’ble High Court may be pleased to adjudge and declare that-

1. This Hon’ble Court does not have jurisdiction in the present matter.

Alternatively, if this Hon’ble Court finds that it has jurisdiction to hear the present matter,
then it may be pleased to adjudge and declare that-

2. The application for interim injunction filed by the petitioners is dismissed.

3. Derby Motors is not liable for infringing and passing off trademark of Marc Inc.

4. YoogleSearch is not liable for infringing the trademark of Marc Inc.

The Court may also be pleased to pass any other order in the light of justice, equity and good
conscience.

All of which is respectfully submitted,

At: Counsel on behalf of the Respondent


Dated: X___________________________

MEMORANDUM ON BEHALF OF THE RESPONDENTS P A G E | 20