Delhi High Court: Heifer Project International-Plaintiff filed a present suit seeking permanent injunction against the defendants, thereby preventing them from using any trade marks and logos that were deceptively similar or nearly identical to plaintiff. Sanjeev Narula, J.*, opined that the present case was a classic instance of ‘triple identity’. The impugned trade marks were nearly identical, as were the areas of operation, and the segments of the public they targeted. Therefore, the defendants’ use of these nearly identical and deceptively similar marks was certain to cause deception and confusion among the general public.
Thus, the Court opined that defendants’ continued utilization of the ‘Heifer’ mark, post-revocation, constituted a clear violation of plaintiff’s intellectual property rights. Accordingly, the Court granted a decree of permanent injunction restraining Defendant 1 or any other person acting for and on their behalf from infringing the plaintiff’s trade mark or any part thereof and/or any other name which was deceptively similar to the trade mark ‘Heifer’ and/ or the leaping device 
/ 
or any other deceptively similar trade mark.
Background
In 1953, plaintiff was incorporated as a non-profit corporation under the Arkansas Nonprofit Corporation Act, 1993. Originally, plaintiff was incorporated under the laws of the State of Indiana, USA and was the surviving corporation following a merger between HPI, Inc. and Heifer Project International, Inc. in 1997. Plaintiff conducted several projects in over 51 countries including India and carried out various charitable projects including disaster rehabilitation, environmental protection and peace, etc.
In 1953, plaintiff adopted a unique and uncommon word ‘Heifer’ as its corporate name and continued to use the same uninterruptedly in connection with, its trade names, corporate name, and trade marks. Subsequently, the Plaintiff adopted two trade marks ‘Heifer International’ and ‘Heifer Project’ regarding its activities. Further, they adopted a device mark of leaping cow, , which was placed in the left-hand top corner of the ‘Heifer International’ trade mark and a pictorial mark having the shapes of several animals namely a cow, a goat etc. in an oval device ‘’ was also used jointly with ‘Heifer International’ (collectively referred as ‘plaintiff’s marks’).
Plaintiff also held the copyright of these artistic creations extending globally and also within India. Further, plaintiff also registered four ‘Heifer’ trade marks with the Indian Trade Mark Office, ensuring comprehensive protection of its intellectual property and the said marks were granted registration during the pendency of the present suit.
Defendant 1 was non-profit charitable trust, formed on 24-12-1992, with its headquarters in New Delhi. It operated under the name ‘Heifer Project – India Trust,’ but was widely recognized as ‘Heifer Project India.’ In 1997, Defendant 2 became associated with Defendant 1 after assuming the role of ‘Country Director- India’ and was simultaneously appointed as the ‘Managing Trustee’.
Plaintiff granted the Defendant 1 permission to utilize the ‘Heifer’ and ‘Heifer Project’ names and associated logo and this authorization was contingent upon a broad agreement that Defendant 1 could employ these trademarks and logo if they operated in a manner that was harmonious and cooperative with plaintiff’s mission and facilitated plaintiff’s activities within India. In return, Defendant 1 was obligated to regularly report on the progress and financial details of the projects financed by plaintiff.
It was contended by plaintiff that in 2002, Defendant 2 began to deviate from his contractual obligations showing a marked reluctance to adhere to plaintiff’s basic requirements for reporting and accountability. Thus, his contract to serve as the Country Director for India was not extended beyond 30-06-2003. However, Defendant 2 maintained his role as Managing Trustee, during which he directed the trust’s operations in a whimsical and arbitrary manner.
On 09-10-2003, Defendant through its letter notified Defendant 1 that it would be suspending all project funding in India. Plaintiff explicitly instructed Defendant 1 to cease the use of the ‘Heifer Project’ trade mark, trade name, and logo. Defendants were further instructed to return all materials, cash, and other properties belonging to plaintiff. However, despite these instructions, defendants persisted in their use of the plaintiff’s marks.
Thus, plaintiff contended that defendants were infringing their registered trade marks and illegally usurping the enormous goodwill and reputation built by them since 1953. Further, defendants had no right to use/apply for the registration of the impugned marks or to carry on any business activities thereunder.
Analysis, Law, and Decision
The Court observed that the pleadings and documents in the present case unequivocally established the plaintiff as the rightful owner and proprietor of the ‘Heifer’ trade mark, trade name, and corporate identity, encompassing logos and other associated marks. Further, the Court noted the objective of Defendant 1, which specifically entailed Defendant 1 working in harmony and cooperation with the plaintiff and facilitating its working in India. The Court opined that given the plaintiffs’ uncontested trade mark rights and the objectives outlined in Defendant 1’s trust deed, it was clear that Defendant 1’s use of the plaintiff’s trade marks without explicit permission constituted an infringement of those trade mark rights.
Further, regarding defendants’ reliance on their FCRA license as a proof of their autonomy, the Court opined that there was sufficient evidence to show that a relationship with plaintiff was established from the very inception of Defendant 1 and it continued for a stretch of time. Thus, the Court opined that even if it was accepted that Defendant 1 was an independent legal entity, this did not negate the fact that a relationship existed between the plaintiff and Defendant 1, which could be characterized as a licensor and licensee, specifically concerning the lawful use of the plaintiff’s trade marks.
The Court opined that the present case was a classic instance of ‘triple identity’. The impugned trade marks were nearly identical, as were the areas of operation, and the segments of the public they targeted. Therefore, the defendants’ use of these nearly identical and deceptively similar marks was certain to cause deception and confusion among the general public. The Court opined that the defendants had persistently engaged in activities that unlawfully exploited plaintiff’s reputation and goodwill. This defiance violated the agreement and also, misled the public and relevant stakeholders regarding the nature of defendants’ affiliation with plaintiff.
The Court opined that the defendants further compounded their infringement by falsely representing their relationship with plaintiff. They insinuated to the public and stakeholders that they remained affiliated with plaintiff, thereby undermining plaintiff’s brand/trade mark. The Court opined that the defendants lacked any legal right or justification to the use of contested marks, or applying for registration of the identical marks for conducting any business activities.
The Court opined that it was unequivocally clear that defendants were engaged in the infringement of plaintiff’s trade mark, trade name, and corporate identity. Thus, the Court opined that defendants’ continued utilization of the ‘Heifer’ mark, post-revocation, constituted a clear violation of plaintiff’s intellectual property rights. Accordingly, the Court granted a decree of permanent injunction restraining Defendant 1 or any other person acting for and on their behalf from infringing the plaintiff’s trade mark or any part thereof and/or any other name which was deceptively similar to the trade mark ‘Heifer’ and/ or the leaping device / or any other deceptively similar trade mark.
The Court directed Defendant 1, or anyone acting on their behalf to hand over to plaintiff all goods, visiting cards, letter heads, packaging and promotional material, catalogues, stationery and any other material bearing the impugned trade marks or any other deceptively similar trade mark. Further, Defendant 1 should recall all the products, marketing, promotional and advertising materials bearing the impugned marks or any other deceptively similar trade mark. The Court also directed Defendant 1 to deliver to the representatives appointed by the plaintiff, destruction of all products, labels, signs, prints, packages, moulds, visiting cards, letter heads and advertisements in its possession or control bearing the plaintiff’s marks. The Court awarded the plaintiff nominal damages of Rs. 3,00,000, and directed Defendant 1 to pay this sum.
[Heifer Project International v. Heifer Project India Trust, 2024 SCC OnLine Del 2847, decided on 23-04-2024]
*Judgment authored by- Justice Sanjeev Narula
Advocates who appeared in this case :
For the Plaintiff: Julien George and Arjun Gadhoke, Advocates;
