Ranjan Narula Associates

Suppression Leads to Adverse Inference

Multipurpose identity card targeted to students that entitle them to discounts on various products and services were subject of trademark and domain name dispute before the Delhi High Court. A suit for trademark infringement, unfair competition and passing off was brought by International Student Identity Card Association (ISICA) based in Denmark and STIC Youth Travels Private Limited (STIC), an Indian company being exclusive licensee of ISICA. The suit alleged that Indian Student Identity Solutions Private Limited (hereafter "ISISPL") an Indian company formed by ex-employees of STIC had adopted a deceptively similar mark "ISID" that infringed ISICA's rights over the trademarks, ISIC and "International Student Identity Card". Further, it is alleged that the domain name adopted by ISISPL, that is, "www.myisid.com" is also identical/deceptively similar to the domain names "www.myisic.com" and "www.myisic.co.uk", adopted by the plaintiffs and in use since the year 2000.

ISICA was granted an ex parte interim injunction (at the time of filing of lawsuit) by order dated 17th February, 2016. By virtue of this order ISISPL was restrained from using the mark/name/logo "ISID", the domain name "www.myisid.com" or any other mark identical/ deceptively similar to ISICA's mark "ISIC". ISISPL on being served sought to set aside the injunction order and ISICA has inturn sought confirmation of the injunction order.

The main issues considered by the court were:

  1. Whether the ex-parte injunction order dated 17th February, 2016 was secured by ISICA by suppressing material facts. In particular, exchange of e-mails between the parties prior to filing of suit established that ISICA was aware of the use of the ISID mark as early as July, 2015 and if it purposely suppressed the emails in order to secure the injunction order.

  2. Whether ISICA had acquiesced in ISISPL's use of the ISID mark/logo as well as the domain name since ISICA were aware of the use and had also explored the possibilities of business collaboration. ISICA did not at any point object to use of the ISID mark and was considering granting ISISPL licence for certain territories in India. Thus, had accepted and acquiesced in use of ISID mark by ISISPL.

  3. Whether the rival marks are similar considering ISIC mark was a label mark whereas, the ISID mark was a word mark. ISIC mark was pronounced as 'I-Sec' and ISID mark was referred to as I.S.I.D where letters "I" and "S" in the ISID mark stood for "Indian" and "Student" and the letters "ID" was a common short form for Identity Card.

Court Ruling

The court after considering the pleadings, documents and arguments made the following observations:

  1. The averment that ISICA hold several registrations for the mark ISIC is incorrect as a couple of registrations relied upon by them have lapsed and not been renewed.

  2. The contention that ISIC has suppressed material facts assumes significance and the documents reveal that there have been several exchanges of emails between the parties. The email exchanges indicate that ISISPL had shared with ISICA the details of their business, business model and the progress made by them. At the relevant time ISICA did not raise any objections as to the use of the ISID mark. In fact, the e-mails indicate that ISICA was willing to grant exclusive license to ISISPL for limited locations. Further, ISICA had also not expressed any apprehension that ISID card would be confused with the ISIC card. The e-mails have a vital bearing on the controversy in issue as it establishes that ISICA were not only aware of the website, the logo and the ISID mark being used by ISISPL but had not objected to the same. Moreover, the said e-mails establish that ISICA was agreeable to join hands with ISISPL and grant license to market the ISIC card in respect of a few locations. The fact that ISICA have chosen to selectively produce only one e-mail and suppress the rest, in view of the court raised genuine doubts with regard to their bonafides.

  3. With regard to acquiescence, the Court held that ISICA was fully aware of the ISISPL's use of the ISID mark but did not raise any objection. ISICA even entered into negotiations for a strategic alliance to licence part of their business to ISISPL. The fact that ISICA was agreeable to associate ISISPL with its business clearly indicates that it had no reservation as to the latter carrying on their business under the ISID mark.

  4. With regard to infringement the Court observed that "ISIC" is a label mark whereas, "ISID" is a word mark. Further, the letters "ISIC" are written in a particular font. ISIC is an abbreviation formed by the initial letters of the words, International Student Identity Card. The business of both parties being one of identity cards for students, it is difficult to describe the business or the product without using the words Student and Identity Card. The letters ID are descriptive of the product - identity cards. Thus, ISICA cannot by virtue of registration of the ISIC mark claim monopoly in the use of the initial letters of the words that are descriptive of the business.

  5. ISICA's grievance regarding ISISPL's use of the domain name "myisid.com" is not sustainable, considering that the former's domain name is "www.isic.com". It is only in two countries where ISICA use the prefix 'my' to their domain name - in United Kingdom where the website is "www.myisic.co.uk" and in India where the website is "www.myisic.com". ISICA adopted the domain name "myisic" in the said two countries since the domain name 'isic.com' and 'isic.co.uk' were not available and had been adopted by another user. Further, ISISPL has established that the use of the word 'my' as a prefix in a domain name is common.

In view of the above the Court set aside the injunction granted earlier in favour of ISICA.

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