EX-PARTE AND AD INTERIM INJUNCTION ORDER TO AN

NGO USING TRADEMARK “GATI”

Apporv Pal

BACKGROUND:

Gati Ltd. is an Indian Multinational courier service company. It comes under ‘Logistic and
supply Chain Management’ category of industries, founded in 1989 by Mahendra Agarwal. It
has offices present in all big cities of India and also in Singapore, Hong Kong, Thailand, China
and Nepal. Warehousing, freight forwarding, trading, cold chain, e-commerce and fulfillment
services are also offered by this company. It is a leader in supply chain Solutions and has got
strong presence in India as well as in SAARC countries and Asia Pacific region.

This company was registered under the Trademarks Act, 1999 in 2005 and since then this is
extensively used by the company. This act has a wide scope and provides security to the name of
a firm so that no one can use the similar name in order to attract the goodwill of a particular firm.
Section 1(j) of trademarks act, 1999 prohibits the use of someone else’s trademarks as a part of
corporate names or names of business concern.

Now ‘Gati Foundation’ is an NGO. According to their facebook page, “gati foundation is a
Dehradun based research and policy think tank, focusing on various aspects of sustainable
development. It is an environment action and advocacy group whose vision is to emerge as one
of the most trusted forums to host and deliberate on issues of environmental sustainability in the
sensitive India Himalayan Region (IHR). It is registered under Societies registration act, 1860 in
june 2017 as a not for profit NGO.

Gati Ltd. filed a suit against Gati foundation for unlawfully/wrongfully using name Gati which
was already registered by Gati Ltd in 2005 under the Trademarks Act, 1999. Keeping the fact
that the petitioner have registered its trademark ‘Gati Lmited’ in 2005 under the trademarks act
1999, the Delhi High Court issued the ex-parte ad interim injunction restraining the defendants
and its agents not to use this trade name until the next hearing.
Ex parte injunction are those which are granted by the magistrate in civil suits, without hearing
the defendant party. Commanding, directing, or restraining court order granted after hearing only
one party in matters of great urgency, without notice to the defendant or other parties is known as
ex parte injunction. A full hearing with notice to all concerned parties is then held on a later date.

These injunctions are used by the court to bring justice. Injunction orders sometimes took 1 year
which then comes no use to the plaintiff. That is why ex parte injunction order are used which
immediately put restrain on defendant for some activities until the next hearing.

Current Issue:

The petitioner (Gati Ltd.) received many phone calls, social media messages from his peer
groups inquiring that does he is also running an NGO named Gati Foundation which is
conducting Circular Economy Symposium on 17th and 18th June, 2019 at the Federation House,
Tansen Marg, New Delhi, collaborated with FICCI. After enquiring a lot it came to the notice of
the petitioner that the NGO is wrongfully using his registered corporate name as their corporate
name. the email address as well as the domain name of the defendant are identical and
deceptively similar to that of the plaintiff registered trade name ‘Gati Limited’.

Further the plaintiff claimed that using the trade name ‘Gati’ will create false impression that the
plaintiff is somehow related to this NGO or invested in this NGO. It was also said that the
defendant was well aware of the goodwill and reputation of the plaintiff and using this name will
somehow damage the reputation and goodwill of the plaintiff.

Section 29(8) of the Trademarks Act, 1999 states that:\

29. Infringement of the registered trademarks—

(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising—

(a) takes unfair advantage of and its contrary to honest practices in industrial or commercial
matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of trade mark.

After going through all these and keeping the fact that the plaintiff has registered its trade mark
in 2005 the Delhi high court passed an ex-parte ad interim injunction order restraining the
defendant and its agents from using, advertising, promoting in any manner, the trademark ‘Gati’
till the next date of hearing. Furthermore it was also clarified by the court that the event known
as Circular Economy Symposium collaboration with FICCI can be held but the trademark ‘Gati’
should not be used in any manner of advertising the event

CONCLUSION:

In its proceeding the court noted that Gati Limited is using this name since 1989 and has been
registered under the trademark act 1999 since 2005. Keeping all these facts in mind the court
ordered ex-parte ad interim injunction and restrained the defendant from using the registered
plaintiff name ‘Gati’ till the next date of hearing.

The court further said that the event can be held but no one will use the registered ‘Gati’ name in
the advertising of the event in any form.