The Delhi High Court recently denied interim relief to Broad Peak Investment Holdings Limited (“Plaintiff”) which alleged trademark infringement and passing off of its BROAD PEAK mark by Broad Peak Capital Advisors LLP (Defendant).
The Plaintiff claimed that it had used the BROAD PEAK mark since 2006, with its earliest registration in Singapore and UK dating back to 2007. It further asserted that it had provided investment advisory services in India since the year 2008, relying on email communications with Indian entities from that year. It had obtained registration for the BROAD PEAK mark in 2017 on a ‘proposed to be used’ basis since it could not trace its earlier use documents.
The Defendant, on the other hand, claimed honest adoption and extensive use of the BROAD PEAK mark since 2016. It had also obtained registration for the BROAD PEAK mark in 2017, claiming use since August 2016.
The court noted that the Plaintiff’s registration was filed after the Defendant’s adoption of the BROAD PEAK mark in India. Furthermore, since the Plaintiff's registration was based on a ‘proposed to be used’ claim and it had not amended the certificate to show prior use, the Plaintiff had effectively admitted not using the mark before 2017 in India. Accordingly, the court was not convinced that the Defendant’s use of the mark constituted trademark infringement.
Moreover, the court observed that the evidence relied on by the Plaintiffs to establish prior use of the mark ‘BROAD PEAK’ in India was limited to a few transactions only, and did not establish any reputation or goodwill of the Plaintiff in the Indian market. The court noted that sporadic use of the mark in India is insufficient to establish reputation and goodwill in the mark in India. The Defendant, however, demonstrated an honest adoption of the mark in 2016. Given that both parties were offering services to sophisticated corporate entities, the court concluded that confusion was unlikely. It also held that the documents showing actual confusion in the market had to be proved by the Plaintiff in trial. Accordingly, based on these findings, the court ruled in favour of the Defendant, and dismissed the Plaintiff’s application for an interim injunction.
Broad Peak Investment Holdings Ltd. and Anr. v. Broad Peak Capital Advisors LLP and Anr. CS(COMM) 45/2024, judgment dated January 20, 2025
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