Madras High Court Upholds Global Prior Use In MediaMonks Trademark Dispute
The Madras High Court has allowed a rectification petition for removal of trademark filed with the name "MEDIA MONK LABEL" and "MEDIA MONK" registered and being used by the respondent. The petition was filed by an international digital advertising company of the same name. The single bench of Justice Senthilkumar Ramamoorthy, allowing the petition, held that the party that uses the mark on a global scale, even if not used in India, shall be identified as the prior user.
Background
The petitioner, MediaMonk, a digital advertising and marketing company based in the Netherlands, is operating under a domain name that has gained international recognition. Its Indian operations began in 2015, and it received trademark registration in India in 2025. The petitioner has now applied to make changes to its trademark. The respondent, an independent marketer, has been using a similar trademark, “Media Monk Label,” since 2009 and has claimed to hold prior rights to the mark in India. The petitioner filed a rectification petition to remove the mark allotted to the respondent, claiming that his mark was identical to that of the petitioner and was adopted in bad faith.
Arguments by the Petitioner
The counsel for the petitioner argued that the petitioner had global use and recognition of the mark since 2001, as evidenced by the date of commencement and international registrations. They contended that the respondent, being in the same market and line of business, was aware of the petitioner's mark, thereby clearly establishing bad faith in adopting a deceptively similar mark. The counsel cited Milmet Oftho Industries and Ors. v. Allergan Inc. (2004), where the court held that the earliest international usage of a mark, regardless of registration in India, is entitled to protection as the prior user.
Observations by the court
The court found that the petitioner was the aggrieved person and is entitled to prosecute for the rectification.The court while deciding whether the impugned trademark was adopted in bad faith held that the respondent adopted and applied for the impugned marks in bad faith and with dishonest intent.The bench bench found that the respondent, an experienced professional in digital marketing, admitted to using online tools like WHOis and was aware that the petitioner owned the domain www.mediamonks.com since 2001. Taking into account his knowledge of the market he worked in, the court found it far unconvincing that he was unaware of the petitioner's well-known international mark when he filed his applications in 2009. The petitioner's mark 'MEDIAMONKS' was deemed inherently distinctive, and the respondent's explanation for adopting a similar mark was rejected as implausible.The court found that the impugned marks were held to be adopted in bad faith, invalidating their registration.The court while adjudging the maintainability of rectification petition due to latches found that defence of complicity shall not stand as the respondent could not prove that the petitioner had actual knowledge of the respondent's use of the mark for the required five year period.Furthermore, the court found that the respondent had applied for the marks in bad faith, which further invalidated the defense. The court also clarified that mere delay in taking action, without clear evidence of consent or encouragement, is not sufficient to bar a rectification proceeding.
Case Title: M/s Media Monks Multimedia v. Pachala Murali Krishna
Citation: 2025 LiveLaw (Mad) 226