The Practice Of 'Defendant Masking': A Mistake Or A Strategy?

Author:Ms Aditi Gupta
Profession:Khurana and Khurana
 
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Introduction

As we all know that "Masks" are conveniently used for hiding the real identity of a person, similar is the practice of "Defendant Masking." As the name suggests, the practice of 'defendant masking' is a strategy used by the plaintiffs in IPR suits to avoid detection of matter in the cause list by masking the 'main defendant' with the other defendant.1 As a result, the plaintiffs succeed in obtaining injunctions in initial hearings of the suits due to the absence of the main defendant's counsel. Recently, the Delhi High Court took notice of such practice in the case of Bata India Ltd vs Chawla Boot House and Anr,2 a case concerning trademark infringement and passing off action. The court took notice of the practice of Defendant Masking in this case and directed stricter measures from the Registry to control it in all IPR suits.

The practice of 'Defendant Masking' it not only limited to trademark infringement cases, but also it extends to patent and copyright infringement cases as well.3 In the case of Microlube India Ltd vs Maggon Auto Centre and Ors,4 the court identified and criticized the strategy of Defendant Masking and directed the plaintiffs to come to court with clean hands.

What Happened in Bata India Ltd Case?

In the case of Bata India Ltd vs Chawla Boot House and Anr5, the plaintiff was a well- known manufacturer and seller of footwear. It adopted the mark 'POWER' for footwear in the early '90s and has been using it for almost 50 years. The defendant no. 2, in this case, was Leayan Global Pvt Ltd, who has filed a trademark application for registration of the mark 'POWER FLEX' in respect of footwear. Also, an application was filed for the tagline 'The Power of Real Leather.' Further, the court found trademark infringement for the mark POWER and the use of the mark POWER FLEX by defendants was held to be sketchy. The court observed that the plaintiff has established reputation and goodwill in the market, took crucial steps for its protection and the mark has become a house mark of the plaintiff. On the other hand, Defendant no. 2 has adopted a clever, tactical and camel-in-the-tent approach to dilute the plaintiff's mark POWER and sell its own goods under the mark of the plaintiff.

In addition to this, the court criticized the practice of defendant masking in this case. In this suit, although the 'main defendant' was Leayan Global but the Chawla Boot House, a shopkeeper based out of Gandhi Nagar, New Delhi who was...

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