Case: – Scrum Alliance, Inc v. Mr. Prem Kumar S. & Ors.; CS(COMM) 700 of 2021
The Delhi High Court in a recent judgement has issued an interlocutory injunction against a leading Scrum certification organization’s competitor, restraining them from using the mark “CERTIFIED SCRUM MASTER” and its associated logo.
The plaintiff, the registered proprietor of Certification Trade Marks (CTMs) including “CERTIFIED SCRUMMASTER” and “CSM,” alleged that the defendants were employing marks and logos deceptively similar to their own, causing potential confusion in the certification services sector. The plaintiff filed the application under Order 39 Rules 1 and 2 CPC, asserting that the defendants’ use of identical or deceptively similar marks in the course of trade infringed upon their registered CTMs.
The Hon’ble Court found a prima facie case of infringement, emphasizing the minuscule difference between the plaintiff’s mark “CERTIFIED SCRUMMASTER” and the defendants’ “CERTIFIED SCRUM MASTER.” The court held that the defendants were not authorized to use the impugned marks, and their usage constituted trademark usage, meeting the criteria for infringement.
The Court while addressing the defendants’ reliance on Section 76 of the Trade Marks Act, the clarified that the section does not require both marks to be registered CTMs. As long as one of the marks is a CTM, each is entitled to be used as a trademark, and no injunction can be granted against such use, whether or not the mark is infringing.
The court denied injunctive relief against defendant No.1’s use of “CSM” as a word mark, as it was found to be a registered word mark and not a CTM. However, the court granted the injunction against the use of “CERTIFIED SCRUM MASTER” and the associated logo, which were not registered in Favor of the defendants.
The Hon’ble Court concluded that a person familiar with the plaintiff’s CTM, when encountering the defendants’ mark, would likely wonder if the plaintiff is providing the certification. This momentary feeling of wonderment, without anything else, was deemed sufficient to establish a “likelihood of confusion.” The court also noted that the defendants’ use of a “sun” motif, previously used by the plaintiff, further indicated an intent to imitate.
Author of this article:
Adv. Ravish Bhatt,
Partner, R&D Law Chambers,
Dual Qualified Lawyer Solicitor | International Tax Affiliate
Connect with Mr. Bhatt on Linkedin: https://www.linkedin.com/in/adit-ravishbhatt/
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