In a recent case of trademark infringement (Dipali Sikand and ors v. Samsung India Electronic Private Limited and Anr.), Samsung India and Story Experiences were restrained by the Bangalore Civil Court from using the trademark “Concierge” based on claims made by the Concierge conglomerate (comprising LesConcierges Services Pvt. Ltd. and Club Concierge Services (India) Pvt. Ltd.).
In a plaint filed by the registered owner of the “Concierge” mark, it was asserted that “Concierge” services were designed for Samsung’s “President Club” loyalty program for the improvement of Samsung’s relationship with dealers.
The validity of the service contract signed between the parties extended up to March 1, 2020; however, Samsung hired Story Experiences for similar services and continued the unauthorised use of the “Concierge” mark on their advertising materials.
The defendants argued that the right to use the word “Concierge” coined during the service they provided to Samsung was to be retained by them as per the contract. They also contended that the plaintiffs could not claim trademark rights on a ‘descriptive word’.
The Court found merit in Plaintiff’s assertions after finding sufficient proof of their services’ existence before Samsung used the phrase for its own commercial activities. The Court also held that “Concierge” was inherently part of the Plaintiff’s company name, and the defendants could not claim rights over it.
Further, the Court observed that “Concierge” is more than a descriptive word as the services provided by Plaintiff differed from the generic dictionary meaning of the same.
The Court made the following observation while granting a temporary injunction in Plaintiff’s favour:
The Court found prior use of the trademark “Concierge” by Plaintiff as per the documents provided. Plaintiff’s business was established in 1998, prior to the launching of the loyalty program and being hired by Samsung for its services. This was sufficient proof to show that the trademark was the brainchild of Plaintiff.
The validity of the trademark “Concierge” is based on Plaintiff’s services being distinctive from the textbook meaning of a hotel bellboy. The trademark is a part of Plaintiff’s company name, hence falling within the exceptions as per Sections 30(2) and 35 of the Trademarks Act.
The Court held that if Plaintiff’s services weren’t distinctive from the dictionary meaning, they wouldn’t have obtained a trademark on May 18, 2016, under classes 35, 39, 41, 43, and 45.