On Superon and the Summary Judgment Problem in Trademark Claims
Last Friday, in Superon Schweisstechnik India v. Geetech India, the Delhi High Court issued ex parte summary judgment in a trademark infringement claim.
The Claim
The Claimant’s infringement claim, brought against competitors in the welding electrodes market, rested on two main points of comparison. First, the Defendant’s trademark ‘Super SS’ was contended to be confusingly similar to the Claimant’s ‘Superon’. Second, the Defendant’s trademark reproduced elements of the Claimants’ logo — principally a black swirl either side of the text of the mark, on a mustard yellow/orange background — in a manner that the Claimant contended justified an injunction for infringement.
The Defendant, who failed to enter a written contest to the claim, was set ex parte on its second date of non-appearance. Mr Justice Manmohan, hearing the Claimant’s case for confirming the injunction, triggered Order 13-A of the CPC to proceed directly to summary judgment.
The Satya Infrastructure Decision
In order to facilitate this, he relied heavily on a February 2013 opinion by Mr Justice Endlaw in Satya Infrastructure v. Satya Infra & Estates. Ruling on a trademark infringement claim, Mr Justice Endlaw had made a case for jumping to judgment in civil actions where Claimants were subjected to going through the motions of an ex parte trial with no credible challenge to their case. He said:
“I am of the opinion that no purpose will be served in such cases by directing the [Claimants] to lead ex parte evidence in the form of affidavit by way of examination-in chief, and which invariably is a repetition of the [plaint]. The plaint otherwise…besides being verified, is also supported by affidavits of the [Claimants]. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the [Claimants] and are already on record. I have therefore heard the [Claimants] on merits qua the relief of injunction.”
Seen in context, Satya Infrastructure was the mid-point of a three-judgment arc by Mr Justice Endlaw in the first half of 2013, bookended by January 2013’s IPRS v. Gauhati Town Club and May 2013’s United Coffee House v. Raghav Kalra. Both IPRS and United Coffee House acted on the same shortcut to return ex parte judgments for the Claimants for the reason that, to quote from the latter decision, “in suits of [this] nature, no purpose is served by mechanically calling upon the [Claimant] to lead ex parte evidence.”
(The Satya Infrastructure shortcut, now statutorily authorised by Order 13-A, has evidently gained currency with Mr Justice Manmohan in recent months. See, for instance, his pro-Claimant findings in November 2017’s Mankind Pharma cases, December 2017’s Saregama, and, most recently, last month’s Du Pont.)
In and of itself, this is no bad thing. There is definitely a compelling point to be made in favour of expediting these front-loaded, one-sided actions where the interim injunction (typically ex parte) supplies close to 100% of the Claimant’s priority in the lawsuit.
However, in Superon, Mr Justice Manmohan drew the following conclusion from his approval of Satya Infrastructure:
“Order XIII-A…empowers this Court to pass a summary judgment, without recording evidence, if it appears that the Defendant has no real prospect of defending the claim. In the opinion of this Court, the Defendant has no real prospect of defending the claim as they have neither entered appearance nor filed their written statement or denied the documents of the [Claimant]. Further, the [Claimant] is the prior user of the trade mark / name / label / packaging / trade dress ‘Superon’.”
Three Problems with Superon’s Application of Satya Infrastructure
The manner of the connection between Satya Infrastructure and these observations is troublesome for three main reasons.
First, the Satya Infrastructure finding was reached on facts where the rival trademarks were identical word marks. Such is not the case in Superon. This has a tangible impact on the potential defences that the Defendant could put up and, indeed, the deceptive similarity inquiry the Court must conduct even in the absence of the Defendant in order to find for the Claimant.
The second objection requires looking past Satya Infrastructure, and to Order 13-A, under which this judgment has evidently been entered. Under Order 13-A, the Court needs to satisfy the standard of the Defendant having no real prospect of defending the claim.
Now, it remains an open question whether the emphasis under Order 13-A is on there being no real prospect of the Defendant defending the claim, as opposed to there being no real prospect of the claim of the Defendant being successful. The former requires an active contest by the Defendant, in which case a Superon-style factual is effectively determined the moment the Defendant is set ex parte. The latter, however, would require the Court to consider whether a conclusion of infringement is inevitable, regardless of contest by the Defendant.
To be sure, it is a fine distinction, and one which, in a case of identical trademarks such as Satya Infrastructure, would mean nothing. However, this is a case where the Claimant’s case, even in isolation, presents multiple objections. None requires the expense of any great intellectual effort.
Let us run through them, for the sake of argument. For one, the prefix ‘Super’, present in both rival trademarks, is extremely common to the welding electrode trade. The Claimant’s registration notwithstanding, the Defendant’s use of ‘Super’ alone is unobjectionable. Further, this is a classic case where it is possible to segregate the trade dress from the trademark itself, the latter being just as arguably defensible as the former is not. Finally, if the Defendant’s date of adoption is in the same ballpark as the Claimant’s, there is the serious possibility of a concurrent use claim, at least over the word mark. Mr Justice Manmohan has unquestionably fallen into error on this last point, for he has concluded, ex parte and entirely without basis, that the Claimant is the prior user in this case.
I am conscious that this may invite disagreement. Claimants, I recognize, are required to clear a much lower bar than usual on tenability and likelihood when advancing a claim against ex parte Defendants. Equally, though, there is a clear difference between a claim that appears to be prima facie accurate — which is all it can be in summary judgment cases of this nature — and one that is verified, in the sense that it eliminates the possibility of the rival claim being accurate.
I am inclined, therefore, to be surer while advancing my point again: set against an unverified conclusion of prior use, surely entering summary judgment in this manner requires a deeper justification than the Court merely logging its “opinion” — as Mr Justice Manmohan does here — that no real defence of the claim is possible.
The final reason to be cautious of the Superon outcome turns on documentary evidence. It requires us to return to Mr Justice Endlaw’s opinion in Satya Infrastructure, which noted:
“Though no document to show that the Defendant was incorporated only in the year 2009 as [has been] pleaded [by the Claimant] [has] been filed, [with] the Defendant having chosen not to contest the suit, there is no reason for this Court to disbelieve the said pleading duly supported by affidavit of the [Claimant].”
There is, therefore, imprimatur from Satya Infrastructure to accept statements made by a Claimant about a Defendant’s antecedents even without documentary proof of any type since “there is no reason…to disbelieve” it.
Reasons not to endorse this position are as numerous as they are compelling. Civil actions are routinely placed before courts of first instance without original documents owing to their temporary unavailability. This typically means that interim injunctions, including those granted ex parte, frequently rely on photocopies, self-serving attestations, or, worse, waivers and exemptions from filing documents.
In trademark claims, these documents can include registration certificates, financial documents, any evidence backing claims of secondary meaning or well-known trademarks, evidence in support of cause of action and jurisdiction, plus any Defendant-facing materials. Any or all of these, it bears repetition, may be produced in forms less primary than the original documents themselves.
To assume these documents to speak to facts and law is a dangerous line to toe at the best of times. However, at summary judgment, by hypothesis, it becomes mandatory to do so. This is, contrary to Mr Justice Endlaw’s characterization of it in Satya Infrastructure, an issue that runs deeper than merely whether or not there is a reason to disbelieve the Claimant.
As such, it is certainly one that should be treated with considerably greater caution than has been afforded to it in Satya Infrastructure. By pivoting his summary judgment around the same view, I fear this is a qualification that must also attach to Mr Justice Manmohan’s decision in Superon. This is not to say, of course, that the decision is not justified on the merits of the trademark infringement claim itself. It is only to say that such a claim ought only to be recognized when it is certain that no other possibility save for the one outlined by the Claimant is feasible.
It is a bar that the Claimant fails to clear by a considerable distance here. That a summary judgment is now possible on such claims asks many more questions about the procedure itself than there are answers for at present.
