The doctrine of 'Delay or Laches' is normally a good defence for intellectual property infringement. As it is said, 'equity aids the vigilant and not those who slumber on their rights'. However, the defendant's conduct should qualify for taking up such a defence. If the passage of time can be shown to have lulled the defendant into a false sense of security, and the defendant acts in reliance thereon, then the doctrine can be applied. Inordinate delay is not equivalent to laches and the two ought not to be used interchangeably. In D.R. Cosmetics Pvt. Ltd. and Anr. v. J.R. Industries 2008(110) Bom.L.R.307, a similar view was taken. In an action for infringement, delay by itself may not be a ground for refusing an injunction. At the same time, the defendant should not have acted dishonestly; his conduct should not have been tainted.
This was the issue before the Delhi High Court in Cable News Network v. Cam News Network Limited (C.S. (O.S.) No. 1815/2006; In the High Court of Delhi at New Delhi). The plaintiff is a leading newsgroup running a twenty-four hour news channel 'CNN International' which was launched in 1985 and is the registered proprietor of the trademark "CNN". The defendant was engaged in printing and publication of news, journals and magazines and was publishing a monthly magazine by the name 'CAM News Network Today'. He used the abbreviated version of his name CNN on his magazine cover which was challenged by the plaintiff. The defendant had written CNN in bold and in a font size which was much larger than the rest of the title of his magazine. The plaintiff alleged that the manner in which CNN was displayed on the cover of the defendant's magazine amounted to passing off. The plaintiff averred that if the defendant was not prevented from using the trademark, it is likely to dilute the distinctiveness which the mark enjoys in relation to the plaintiff's goods and services and thereby debase and erode the latter's goodwill and reputation in the Indian as well as international market.
The defendant maintained that the suit was barred by doctrine of laches and argued that the plaintiff came to know of the publication of magazine in 2003, but had not taken any action since. He attributed acquiescence on the part of the plaintiff who deliberately and knowingly allowed the defendant to invest time, money and labour in building a sizeable readership base for its magazine.
The Court resolved the issue by holding that "delay by itself not a sufficient defence to an action for interim injunction in an action for infringement of trademark and passing off, but delay coupled with prejudice caused to the Defendant would amount to latches". Further, the onus of proof resting on the defendant, he failed to establish that there was prejudice because of the delay, latches and acquiescence on the part of plaintiffs. Lastly, the defendant failed to establish itself as an honest and concurrent user of the registered trademark 'CNN'. The defence of delay and latches is a defence in equity and an equitable defence cannot be taken up by a party whose conduct is vitiated by fraud and dishonesty.
The Court also went on to distinguish between inordinate delay, laches and acquiescence. The Court said that "Inordinate delay is generally understood to be delay of such a long duration that the defendant could have come to the conclusion that the plaintiff has, possibly, abandoned his right to seek relief or to object to the defendant using the trade mark." The court cited Kerly on Trademarks thus "The classic case of acquiescence proper is where the proprietor, knowing of his rights and knowing that the infringer is ignorant of them, does something to encourage the infringer's misapprehension, with the result that the infringer acts upon his mistaken belief and so worsens his position." Hence a defendant who knowingly infringes plaintiff's mark can hardly complain if he is later sued upon it, nor can a defendant who starts to infringe without searching the Register of Trade Marks or if he had searched learnt of the plaintiff's mark.
The Court articulated that in the case of inordinate delay or laches, as distinguished from the case of acquiescence, the main injustice which may be caused to the defendant would be the plaintiff not acting at an earlier point of time, consequent to which the defendant was able to set up his business using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be alert of the infraction by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to injure the plaintiff's business.
The balance of convenience thereby lay in favour of the plaintiff entitling him to interim relief. Defendant was accordingly restrained from printing, publishing, selling, marketing and advertising any magazine or providing news services in any format whatsoever under the trade mark CNN.
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