Partly allowed

Giridhar Sathyamorthy v. Ms.Kanakadhara Srinivasan and 2 others

Madras HC9 Aug 2021OA/186/2020

Case brief

AI extract

What is this about?

In a suit for trademark and passing off, the court acknowledged the applicant's ownership of the domain initiumpartners.in but dismissed the injunction against using the trademark INITIUM to avoid curtailing the respondent's business as a co-owner, while allowing the injunction against using the specific domain name.

What did the court decide?

Prayer restraining use of domain name initiated permitted; Prayer restraining use of trademark INITIUM dismissed.

Giridhar Sathyamorthy Vs Ms.Kanakadhara Srinivasan and… — Intellectual Property | Madras HC (2021)

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O.A.Nos.185 &186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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O.A.Nos.185 & 186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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DR.G.JAYACHANDRAN, J.

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Heard the learned counsel for the applicant and the learned counsel

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for the respondents.

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2. The suit is filed for injunction, declaration of trademark and

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passing off. These two applications are filed for injunction restraining the respondents from using the infringing trademark INITIUM.

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3. The short point in this case is that the applicant along with the 1^st defendant had started the LLP (i.e.) the 2^nd defendant firm and the trademark Registry has granted trademark for the word INITIUM. The applicant is the exclusive owner of the domain name “initiumpartners.in”. The 2^nd respondent LLP came into existence on 17.02.2015. The subject trademark was granted to

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the LLP on 08.08.2016. The application for the trademark was made by the

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plaintiff and the 1^st defendant on behalf of the 2^nd defendant LLP showing the address of the plaintiff. It is also admitted that the domain name “initiumpartners.in” stands in the name of the plaintiff and registered on 05.02.2015. The dispute between the plaintiff/applicant and the 1^st respondent

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has arisen after the applicant has resigned from the partnership on 29.02.2020.

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https://www.mhc.tn.gov.in/judis/

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1/5

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O.A.Nos.185 &186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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4. It is brought to the notice of this Court that for the settlement of

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shares, parties have already initiated arbitration proceedings and the same is pending.

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5. The learned counsel for the respondent would submit that he has

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filed an application under Section 8 of the Arbitration Act, to refer the matter to the Arbitrator and the same is pending in the Registry. However, the present dispute in the suit is prima facie regarding the intellectual property right of using the trademark INITIUM. Whether the said dispute is arbitral or not is the subject matter for further deliberations. Since the suit is filed for declaration of title claiming exclusive ownership, prima facie it is a matter to be decided by the Court.

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6. As far as the relief sought in the interim application is

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concerned, the applicant claims exclusive right whereas the 1^st defendant claims

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the plaintiff have no right over the trademark “INITIUM”. The said trademark application is jointly made by the plaintiff and the 1^st defendant. As a partner of the LLP, the plaintiff was enjoying the subject trademark. It was even prior to LLP incorporation the word has been coined. The applicant has obtained domain name. The ownership of the trademark whether can now be exclusively

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https://www.mhc.tn.gov.in/judis/

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2/5

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O.A.Nos.185 &186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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enjoyed by the 2^nd respondent taking advantage of the retirement of the applicant without settling his share is intrinsically connected and not a issue purely within the domain of the Arbitrator. The LLP which was incorporated with the plaintiff and defendant as its partners without a legally accepted causation, cannot claim ownership over the Trademark independent of its partners.

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7. For the present, this Court is of the view that the respondents have no right to use the domain name initiumpartners.in platform, which exclusively stands in the name of applicant and came into existence even prior to incorporation of LLP and also instantly this Court finds that the domain name and the trade name are identical, but if any injunction is granted against the respondent for using the trademark, it may substantially curtail the business of the respondents, who also happens to be the co-owner of the trademark. Hence the application in A.No.186 of 2020 filed for injunction restraining the respondent from using the trademark INITIUM is dismissed. Prayer in A.No.185 of 2020 restraining the respondent from using the domain name “initiumpartners.in” is allowed.

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https://www.mhc.tn.gov.in/judis/

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3/5

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O.A.Nos.185 &186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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8. The dismissal of the injunction against the respondents 1 and 2

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will not be an impediment or bar for the applicant to use the trademark, since there is a prima facie material to show the applicant is a co-owner of the

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trademark and prior user of the name.

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09.08.2021

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rpl

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https://www.mhc.tn.gov.in/judis/

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4/5

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O.A.Nos.185 &186 of 2020 in C.S.(Comm. Div.).No.140 of 2020

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DR.G.JAYACHANDRAN, J.

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rpl

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O.A.No.185 & 186 of 2020
in C.S.(Comm. Div.).No.140 of 2020
09.08.2021

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https://www.mhc.tn.gov.in/judis/

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Giridhar Sathyamorthy v. Ms.Kanakadhara Srinivasan and 2 others

Case brief

What is this about?

What did the court decide?

Giridhar Sathyamorthy v. Ms.Kanakadhara Srinivasan and 2 others

Case brief

What is this about?

What did the court decide?

What the court decided

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Issues for consideration

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