Case Name: M/S Media Monks Multimedia Holding B.V. Vs. M/S Pachala Murali Krishna And Another
CASE OUTLINE
The Madras High Court ordered the removal of six registered trademarks, including word and device marks with the name “MEDIA MONK,” from the Indian Trademarks Register after granting six rectification applications submitted by Netherlands based digital marketing company MediaMonks Multi Media Holding B.V.
In 2009, Hyderabad-based advertising Pachala Murali Krishna registered the trademarks under Classes 9, 16, and 35. The petitioner claims that it has been utilizing the MEDIAMONKS mark globally since 2001 and began conducting business in India in 2015.
The Court determined that the marks were misleadingly similar and had been adopted in bad faith, despite the Indian respondent’s claims of prior usage and personal origin of the name.
FACTUAL CONTEXT
The petitioner, Media Monks Multimedia Holding B.V., a Netherlands based digital media and advertising firm that was established in 2001, has been utilizing the trademark “MEDIAMONKS” as a trade name, domain name, and service identifier all over the world. Under classes 16, 35, and 09, the petitioner filed rectification petitions to invalidate the registrations of the word mark “MEIDIA MONK” and the device mark “MEDIA MONK” with a frog label (collectively referred to as the “impugned marks”) in favor of the first respondent. Beginning operations in India in 2015, the petitioner filed an application on October 24, 2015, to register the word mark “MEDIAMONKS” on a “proposed-to-be-used” basis under classes 35, 41and 42.
The petitioner claims, Mark has established an international reputation and it has evidence of international registrations, including those made in compliance with the Madrid Protocol. The petitioner claimed that because of its widespread use and global awareness, its mark was naturally unique and had developed a trans-border reputation. However, claiming to be a self-taught media professional, the first respondent asserts that he came up with and used the contested marks in January 2009, drawing inspiration from his moniker “MEDIA MONK.”
ARGUMENTS CONTENDED
Petitioner’s Arguments:
- The petitioner argues that the contested marks should be removed from the Register because they are nearly identical to its previous mark, “MEDIAMONKS,” and were adopted in bad faith.
- The petitioner provided proof of its trademark usage and logistics, including media coverage from 2001 onwards, awards and advertising campaigns for global corporations.
- According to the petitioner, the first respondent was aware of the mark and had applied fraudulently for the contested marks.
- Petitioner relied upon the judgment in Milmet Oftho Industries and Ors. v. Allergan Inc. (2004) and Hardie Trading Ltd. and another v. Addisons Paint & Chemicals Ltd., (2003)
Respondent’s Arguments:
- The first respondent justified his use of the contested marks by claiming that he honestly came up with them in 2009 referring from his nickname, before the petitioner’s Indian business was established.
- He maintained that he was not aware of the petitioner’s trademark and that his use of the marks was authentic.
- Respondent relied heavily of the judgment of the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited and Ors. And Chanda Softy Ice Cream & Ors. v. ‘MARS’ Incorporated and Anr.
KEY LEGAL ISSUES
The following key issues were there before the court:
1. Whether the petitioner is permitted to initiate the case in India in accordance with the relevant provisions of the Trade Marks Act, 1999?
2. Whether the first respondent, adopt and utilize the trademark MEDIAMONK before the petitioner?
3. Whether there is a misleading similarity between the petitioner’s and the first respondent’s trademarks?
4. Whether the impugned mark was adopted and registered in bad faith ?
5. Whether the relevant requirements of the Trade Marks Act, 1999, get in the way of the entry pertaining to the contested mark?
6. Whether is it incorrect for the contested trademark to still be on the register or was it added there without good reason?
JUDGEMENT
ANALYSIS & REASONING:
- The court determined that the petitioner were working in the same industry as the first respondent and has a legitimate grievance against the contested entries. Given this factual situation, the petitioner is authorized to pursue the current rectification petitions since they are a “person aggrieved.”
- ‘MEDIA’ is juxtaposed in a novel and distinctive way in the petitioner’s mark. With the exception of removing the letter “S” and adding a space between the words “MEDIA” and “MONK,” the contested word mark, “MEDIA MONK,” is almost exactly the same as the petitioner’s mark. ‘MEDIA MONK’ and ‘MONKS’ are the main features of the contested device mark, even if it shows a leaping frog. It is intrinsically unique in light of this particular juxtaposition.
- Given that the court determined that the first respondent had been involved in the digital media industry for a number of years at the time and that the petitioner company was the first to adopt the mark “MEDIAMONKS,”
- And the first respondent’s justification for adoption because of his nickname and evidence given by Petitioner during the examination and cross is persuasive and it seems by respondent, to be after-the-fact justification of the application for registration of the deceptively identical marks.
- These factors lead to conclusion that the contested marks were adopted and used dishonestly and in bad faith.
- Given the conclusion that the competing marks are misleadingly similar, as well as the petitioner gained favor and recognition in India before, It is determined that the entries pertaining to the contested marks were entered on the register without adequate justification, due to the first respondent’s use in 2009 and the fact that the first respondent’s adoption and use were not made in good faith.
FINAL VERDICT:
By the final verdict given, the madras high court allowed all 6 ratification applications and ordered the removal of six registered trademarks including both word and device marks bearing the name “MEDIA MONK” from the Indian Trademarks Register, also directed the Registrar of Trademarks to remove the entries for Trade Mark Nos. 1846455, 1846456, 1846457, 1846458, 1846459, and 1846460. The Court gave 60 days for compliance from the order date. There was no cost order passed.
KEY LEGAL PRINCIPLE SETTLED IN THE CASE
1. Extent of Prior Usage Doctrine: This decision reinforces the idea that earlier global usage of a trademark, supported by trans-border reputation and distinctive character, might justify the rectification of subsequent Indian registrations made in bad faith.
2. Key considerations to prove similarity: It demonstrates that deceptive similarity is determined by a combination of similarity, business overlap, and customer perception.
3. Rejected the defence of acquiescence: Furthermore, the Court noted that bad faith adoption invalidates defenses under Section 33 of the Trademarks Act, mere publication in the Trademarks Journal does not establish actual knowledge and that delay alone cannot prevent rectification when the public interest in maintaining register purity is at risk.
CONCLUSION
The ruling in the MediaMonks case by the Madras High Court represents a major reaffirmation of the Indian legal precepts of rejecting bad faith registrations, protecting worldwide brands, and maintaining trademark integrity. The Court acknowledged the petitioner’s trans-border reputation and long-standing worldwide usage of the “MEDIAMONKS” trademark by granting the rectification petitions and directing the elimination of the contested marks. It underlined that once a brand has gained international recognition and distinctiveness, its trademark rights are not limited by national boundaries. Crucially, the Court made it clear that a mark that has been adopted dishonestly or deceptively is not legitimate just because it has been registered in India before.
REFERENCE:
- M/S Media Monks Multimedia Holding B.V. V. M/S Pachala Murali Krishna and another- https://www.mhc.tn.gov.in/judis/index.php/casestatus/viewpdf/1227894
- https://www.legalserviceindia.com/Legal-Articles/evaluating-trans-border-reputation-and-bad-faith-adoption-in-indian-trademark-law/
AUTHOR: Priya Nahar, 4th Year Law Student at Amity University Madhya Pradesh
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