Whether the prior registration of a trademark presides over the usage of a similar mark?


-Roshni Jaiswal

In today’s times, who hasn’t heard about Blinkit, an instant delivery service-based application. Originally founded by Albinder Dhindsa and Saurabh Kumar as Grofers back in 2013, the product is now owned by Zomato as of its acquisition since June 2022. Initially known as ‘Grofers’, the quick commerce company got rebranded to become ‘Blinkit’ with effect from 13 December 2021.

The Bengaluru bench of High Court of Karnataka, in an order dated 17.04.2022, set aside the order dated 10.08.2022 passed by the trial Court in an infringement suit which was brought by Bunkhit Private Limited against Blink Commerce Private Limited on account of the latter’s use of the trademark ‘Blinkit’. The former’s i.e., the plaintiff’s cause of action arose from the fact that it had attained registration of the marks, viz., ‘BLINKHIT’ and ‘iBLINKHIT’ in various classes and was using them since the year 2016. The trial Court ruled in favor of the plaintiff upholding that the defendant’s mark is indeed deceptively and confusingly similar to that of the plaintiff’s and also, on account of the plaintiff’s prior registration of the concerned marks, temporary injunction was granted against the defendant’s use of the mark ‘BLINKIT’.     

The defendant i.e., the appellant in the present matter, appealed against the subordinate court’s order and pleaded, inter alia, that the said court has erred in its judgment and then passed an order which is erroneous, arbitrary and quintessentially, contrary to the materials available on record. Advancing on the reasoning, the appellant contended that the respondent has been insufficient in substantiating its claim of the usage of its registered trademarks; Hence, mere realization of the registration of the respective trademarks, without any evidence of their commercial use, does not enable the respondent to demand exclusivity over the respective trademarks or their counterparts. Such heavily relied upon backless argument from the respondent’s end is deemed to be put under strict scrutiny to make an informed ruling.     

The Hon’ble High Court of Karnataka, while appreciating that the impugned order has been issued mainly owing to the respondent’s prior registration of the contested trademarks, opined that “…mere obtaining of registration of a trademark (device mark) comprising of the word BLINKHIT/iBLINKHIT component cannot be construed or treated as a document of title…” Further, the learned Bench reiterated the Supreme Court’s decision in the case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683  which read as “…registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better end superior in common law which have been recognised in the form of the registration by the Act.” Penultimately, the Court put aside the impugned order of temporary injunction against the appellant basing its reasoning on grounds, viz., non-use of the registered trademarks by the respondent since their registration as was readily discernible from materials on record and also, that the appellant’s and the respondent’s nature of service/business/ activity are drastically distinguishable.     

Conclusively, the instant verdict was able to recognize the ulterior legislative intent behind the statute of the trademarks’ law and simultaneously aligned it with the rights conferred to a user by the principles of Common Law. It is inarguable that priority of registration, if coupled with non-commercial usage, will never grant the registration holder the ability to exercise the rights associated with a registered trademark which he or she would have enjoyed otherwise.     


Blink Commerce Private Limited v. Bunkhit Private Limited, 2023 SCC OnLine Kar 22.