The Delhi High Court ruled in favour of Indian businessman Vidya Bhushan Jain in a long-running trademark dispute with Pakistani trader Mohamad Younus Sheikh over the use of the brand name ‘ELFY’.
NEW DELHI: The Delhi High Court has granted relief to an Indian businessman in a long-pending trademark dispute involving the use of the brand name ‘ELFY’.
The case was between Indian manufacturer Vidya Bhushan Jain and Pakistani national Mohamad Younus Sheikh.
The dispute was over the ownership and usage rights of the ‘ELFY’ trademark, which is used for industrial adhesives. Sheikh, who runs Al-Nazeer Nippon Chemicals in Karachi, Pakistan, claimed that he had been using the name and logo (a baby elephant hanging from an arrow) since 1981. He alleged that Jain had dishonestly copied the trademark and logo to benefit from the reputation of Sheikh’s business.
In 2012, the Intellectual Property Appellate Board (IPAB) agreed with Sheikh and ordered the removal of Jain’s trademark registration, saying Jain had not proven continuous use of the mark since 1988. The order affected Jain’s legal right to use the brand ‘ELFY’ in India. As a result, Jain challenged the decision in the Delhi High Court in 2012.
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After years of delay, Justice Saurabh Banerjee finally gave a ruling on May 6, 2024. The judge set aside the 2012 IPAB order and allowed the Indian businessman’s trademark to stay on the official register.
“The order dated 13.09.2012 passed by Intellectual Property Appellate Board (IPAB), Chennai in TRA/121/2004/TM/DEL (C.O. No. 18/2003) is set aside and the trademark No.605340 in Class-01 filed by the petitioner herein is allowed to subsist in the Register maintained by the Trade Marks Registry in accordance with law,” the Court ordered.
In May 2017, Jain’s lawyer informed the Court that his client’s trademark registration was valid only until August 27, 2017. If it was not renewed in time, Jain would permanently lose the rights over the mark. However, since the case was still pending, the Trademarks Registry refused to process the renewal.
After the issue was brought to the attention of the Court, the Delhi High Court allowed the renewal of the trademark for another 10 years, but made it subject to the final outcome of the case.
During the COVID-19 pandemic, Vidya Bhushan Jain passed away, and his business partners took over the case. Meanwhile, Sheikh lost interest and stopped participating in the proceedings. According to the Court record, Sheikh had not appeared since July 2019, and despite repeated efforts to contact him, he remained unrepresented. So, the case proceeded ex-parte, which means it continued without hearing the other party.
The Trademarks Registry informed the Court that the trademark had already been renewed till August 27, 2027, and there was no point in continuing the petition anymore.
“In terms thereof, this Court agrees with the submission made by the learned counsel for the respondent no.2 as there is indeed nothing surviving in the present writ petition,” it said.
As a result, the Court officially cancelled the IPAB’s 2012 order and disposed of the petition filed by Jain.
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The petitioner (Jain) was represented by Advocates Kunal Khanna, Krtin Bhasin, Prakhar Sharma and Praveer Sharma.
The Trademarks Registry was represented by Rajesh Gogna (Central Government Standing Counsel), with Advocates Priya Singh and Rebina Rai.
View Order
