Vimi Verma v. Sanjay Verma & Others

"Family name, shared fame — Delhi HC enforces trademark rights within heirs"

Short Description :

This case revolves around a trademark dispute within a family business where inherited marks were being misused by one group of heirs. The Delhi High Court had to determine whether trademark rights governed by a family settlement could be enforced against another family member misusing a commonly inherited brand.

Facts :

Vimi Verma, one of the legal heirs of a family-run business, filed a suit against her brother Sanjay Verma for unauthorized use of the trademark “SIMPEX.” The siblings had previously signed a Memorandum of Understanding (MoU), which divided their business and intellectual property rights. Despite the agreement, Sanjay Verma continued to use the trademark “SIMPEX” in violation of the MoU, which led to this legal dispute.

Findings :

The Delhi High Court held that the family MoU was valid and binding on all parties, and the continued use of the trademark “SIMPEX” by Sanjay Verma amounted to trademark infringement. It noted that although the trademark was originally jointly inherited, once a legal division had been agreed upon through a settlement, each party was bound to respect the allocation. The court also clarified that trademark disputes involving third-party confusion are not arbitrable even if arbitration clauses exist between the parties.

Suggestions :

This case emphasizes the importance of properly drafting and executing family settlements involving shared business IP. Trademarks passed through inheritance should be clearly partitioned, and any agreed usage rights must be strictly enforced. Trademark disputes within families can have legal remedies and cannot be brushed aside as internal disagreements.

Judgment :

Date : October 21, 2013

The Delhi High Court passed a permanent injunction restraining Sanjay Verma from using the “SIMPEX” mark or any other deceptively similar name. The court upheld the enforceability of MoUs in dividing inherited trademark rights and asserted that misuse of such rights post-settlement invites civil liability.