INFRINGEMENT OF REGISTERED TRADE MARKS :

Infringement, very broadly means taking unfair advantage or being detrimental to the distinctive character or reputation of a trade mark.

Under the Trade Marks Act, 1999 the meaning of infringement has been enlarged as more actions shall be taken as constituting infringement which are listed in Section 29.

Section 29 dealing with infringement of trade marks explicitly enumerates the grounds which constitute infringement of a registered trade mark. This section lays down that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. This section clearly states that a registered trade mark is infringed, if the mark is identical and is used in respect of similar goods or services; or the mark is deceptively similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or the trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.

Sub-section (4) states that a person shall be deemed to have infringed a registered trade mark, if he uses a mark which is identical with or similar to the trade mark, and is used in relation to goods or services which are not similar to those for which trade mark is registered; and the registered trade mark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. Sub-section (5) prohibits a person from using someone else’s trade mark, as his trade name or name of his business concern or part of the name of his business concern dealing with goods or services in respect of which trade mark is registered.

A person shall be deemed to have used a registered trade mark in circumstances which include affixing the mark to goods or packaging, offering or exposing the goods for sale or supply of services, importing or exporting the goods, using the trade mark as trade name or trade mark on business paper or in advertising. A person shall also be deemed to have infringed a registered trade mark if he applies such registered trade mark to a material intented to be used for labelling or packaging goods as a business paper, or for advertising goods or services knowing that the application of such mark is not authorised by the proprietor or licensee. Advertising of a trade mark to take unfair advantage of, or against the honest industrial or commercial practices or which is detrimental to the distinctive character or is against the reputation of the trade mark shall constitute an infringement under Section 29(8) of the Act. Where the distinctive element of a registered trade mark consists of words, the spoken use of such words as well as visual representation for promoting the sale of goods or promotion of service would constitute infringement under Section 29(9) of the Act.

The infringement action is a statutory remedy available to the registered proprietor or to the registered user, based on statutory rights conferred by registration of a trade mark, subject to other restrictions laid down in Sections 30, 34, 35 of the 1999 Act.

An infringement action is available to the registered proprietor or registered user to enforce his exclusive right over the trade mark in relation to the goods in respect of which it is registered. If at the time of registration of trade mark, certain limitations or conditions have been imposed, then, the exclusive right has to be evaluated within the terms of such registration. If an offending use of the mark fulfils the conditions laid down in Section 29(1) discussed above, it squarely constitutes infringement

In M/s J K Oil Mills v. M/s Adani Wilmar Ltd., 2010 (42) PTC 639 (Del.), the Delhi High Court held that in order to constitute infringement under the provisions of Section 29 of the Trade Marks Act, it would be necessary to show that impugned trade mark (label) is identical or deceptively similar to the registered trade mark. And once the plaintiff is able to establish that the impugned trade mark (label) is identical or deceptively similar to the registered trade mark (label) then, it matters little whether the defendant is using the impugned mark/label in respect of the goods and services which are not similar to those in respect of which the trade mark is registered.

In Parle Products v. J P & Co. AIR 1972 SC 1359, the Apex Court observed that in this case the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both, though not identical, bears such close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The words “Gluco Biscuits” on one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone, in our opinion, who has a look at one of the packets on a day, may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendant’s wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes.

The Court held that the defendants’ wrapper is deceptively similar to the plaintiffs’ registered trade mark. For infringement nothing more is required to be proved. These days such cases which rely more on visual similarity involving get-up are classified in cases involving Trade Dress.

In S.M. Dychem v. Cadbury India 2000 PTC 297 (SC), the Apex Court said that on the first impression we are of the view that the dissimilarities appear to be clear and more striking to the naked eye than any similarity between the marks, and on the whole the essential features of two marks are different. The Court further said that if the essential features have been copied, the intention to deceive or cause confusion is not relevant in an infringement action. If a false representation is made out even when there is no intention to deceive or confuse it is sufficient to constitute infringement. However, in the present case on the question of relative strength, the decision must go in favour of the defendant and the High Court was right.

Thus, new trade marks made by introducing dissimilarities in the trade mark, which are based on the materials or features which are already incorporated in the existing trade marks, may not constitute infringement of such earlier trade marks if the totality of impression produced by the new mark is not confusing even though there are many similar parts in the trade mark.

The Calcutta High Court in Hearst Corpn. v. Dalal Street Communication Ltd. 1996 PTC 126 at 129 (Cal), said that in an action for infringement – (a) the plaintiff must be the registered owner of a trade mark; (b) the defendant must use a mark deceptively similar to the plaintiff’s mark; (c) the use must be in relation to the goods in respect of which the plaintiff’s mark is registered; (d) the use by the defendant must not be accidental but in the course of trade. In the present case, the plaintiff had been publishing a monthly magazine from 1933 and selling the same in the name of its registered trade mark ‘Esquire’ since 1942. The plaintiff also owned the copyright in the script, get-up and style in which the trade mark ‘Esquire’ is retailed. From October, 1994 the defendant started publishing a monthly magazine with the name ‘Esquare’. Relying on the Pianotist Co. Ltd. (1906) 23 RFC 774, Roche & Co. v. Manners & Co. (P) Ltd., AIR 1970 SC 2062 & 2064 wherein it was held that it must be seen whether there was an overall similarity between the two names in respect of the same description of goods, both visually as well as phonetically, the Court remarked that the covers of the magazines of the defendant would appear to be framed with the idea of attracting the male interest whatever might be the contents. For these reasons, on the basis of the phonetic similarity, it appears to be clear that an unwary purchaser of average intelligence and imperfect recollection would be likely to confuse the defendant’s use of the mark ‘Esquare” on its magazine with the plaintiff’s publication ‘Esquire’. Another way of considering the issue of infringement is if the defendant’s mark was an imitation of the plaintiff’s mark. This, of course, implies a certain lack of bona fides on the imitators’ part. Injunction was issued to restrain the defendant from infringing registered trade mark of the plaintiff. [See also Amritdhara Pharmacy v. Satya Deo AIR 1963 SC 449].

In Brooke Bond India v. C. Patel & Co., 1993 IPLR 220 (Cal.), the Court held that application by the defendants of the trade mark Taj Tea in India on the packets of tea is an infringement of the registered trade mark of the plaintiff. Interim injunction was issued even though the defendant was willing to alter the colour scheme and get up of his packets bearing trade mark Taj Tea. In Cox Distillery v. McDowell & Co., 1999 PTC 507, the Court said that there is deceptive similarity between the label used by the plaintiff as his trade mark and the one introduced by the defendant. It amounts to infringement of the plaintiff’s trade mark within the meaning of Section 29(1). The defendant was restrained from using COX DIPLOMAT premium Whisky as the defendant used the logo and print of similar size and word DIPLOMAT on label with the printed figure of human being which made his label similar to the registered trade mark of the plaintiff. [ See also Kewal Krishan Kumar v. Master Hawa Singh, 2000 PTC206; Amar Singh chawalwala v. Shree Wardhman Rice, 1996 PTC 196; J. R. Kapoor v. Micronix, 1994 Supp (3) SCC 215; Himalaya Drug v. SBL Ltd. 1996, PTC 553].

The Calcutta High Court in East and Hosiery Mills Pvt. Ltd. v. Agarwal Textiles Mills, AIR 1971 (Cal), considered the resemblance in respect of the get up of the two marks phonetically ‘Moti’ and ‘Sacha Moti’. It was found by the Court that ‘Sacha Moti’ was used by the defendants to imitate the name ‘Moti’ of the plaintiffs. There is phonetic similarity between the words. The explanation that the name ‘Moti’ has been taken from Moti Ram Gupta, father of one of the partners of the defendant firm was not accepted by the Calcutta High Court in the above case. Therefore, even though the defendant used his father’s name, it was held that the defendant’s use of the name and mark was likely to deceive or cause confusion or injury to the goodwill of the plaintiff’s business.

The Supreme Court in Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel, 2006 (8) SCC 726, held that a trade mark is the property of the manufacturer. The purpose of a trade mark is to establish a connection between the goods and the source thereof which would suggest the quality of goods. If the trade mark is registered, indisputably the use thereof by a person who is not otherwise authorised to do so would constitute infringement.

In T.V. Venugopal v. Ushodaya Enterprises Ltd., (2011) 4 SCC 85, the Supreme Court noted that the respondent’s mark “Eenadu” had acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. It was held that the Appellant was clearly attempting to utilise the reputation and goodwill of the Respondents. The Court reasoned that allowing the Appellant to use the mark would create confusion in the mind of the consumers, leading the consumers to think that the incense sticks were manufactured by the Respondent’s company. The Court said that permitting the Appellant to use the trade mark would lead to the erosion of the extra-ordinary reputation and goodwill acquired by the Respondent. The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties. This approach is in consonance with protecting proprietary rights of the Respondent company.

Delhi High Court in Infosys Technologies Ltd. v. Adinath Infosys Pvt. Ltd. & Ors, ( November, 2011) held that by using the word INFOSYS which is the registered trade mark of the plaintiff as the key feature of its corporate name, defendant has clearly infringed the registered trade mark of the plaintiff. The Court restrained the defendant from using the expression “INFOSYS” or any other expression which is identical or deceptively similar to the trade mark “INFOSYS” as a part of its corporate name or for providing any of the services in which the plaintiff-company is engaged.

Raj Kumar Prasad & anr V. Abbott Healthcare Pvt Ltd [DEL] FAO(OS) 281/2014 Pradeep Nandrajog & Mukta Gupta, JJ. [Decided on 10/09/2014]

Brief facts:

It is the case of Abbott that the predecessor-in-interest of the registered trademark ‘ANAFORTAN’ used the same extensively and widely for the medicines manufactured and sold in the market and since September, 2010 Abbott had been doing so. Thus, Abbott had established a good will and reputation in the mark ‘ANAFORTAN’. As per Abbott it had sold pharmaceutical products under said trademark in sum of Rs.7.84 crores between September to December, 2010 and 23.047 crores between January and December, 2011. The grievance was that Raj Kumar Prasad, carrying on business as a sole proprietor of Birani Pharmaceuticals, was selling pharmaceutical products containing Camylofin Dihydrochloride under the brand name ‘AMAFORTEN’. Concerning the second defendant Alicon Pharmaceuticals Pvt. Ltd. the grievance was that it was manufacturing the medicinal preparations for Raj Kumar Prasad, to be sold under the mark ‘AMAFORTEN’. It is the case of Abbott that Raj Kumar Prasad surreptitiously obtained, vide registration No.1830060 under class 5, the registration of the mark ‘AMAFORTEN’ for which Abbott intends to file rectification proceedings.

Decision: Appeal dismissed

Reason:

The view taken by the learned Single Judge is based upon a reading of Section 124 of the Trademarks Act, 1999. The learned Single Judge has held that a registered proprietor of a trademark is entitled to sue a registered proprietor of a trademark if the latter is identical with or nearly resembles the other. Holding that the suit would be maintainable, the learned Single Judge has held that the trademark used by the defendants ‘AMAFORTEN’ is ex-facie phoneticallyband visually deceptively similar to that of Abbott ‘ANAFORTAN’.

The learned Single Judge has noted that through its predecessors Abbott had been using the trademark ‘ANAFORTAN’ extensively since the year 1988 and thus has injuncted the defendants from selling its product under the trademark ‘AMAFORTEN’ or any other mark deceptively similar to that of Abbott.

Ex-facie there is visual and phonetic deceptive similarity in the trademark ‘AMAFORTEN’ in comparison with the trademark ‘ANAFORTAN’. It has to be kept in mind that the competing goods are pharmaceutical preparations, the class of the goods is the same; the consumer is the same and the trade channel is the same. Concededly through its predecessors-in-interest Abbott has inherited the good will and reputation in its trademark ‘ANAFORTAN’ and would be entitled to protect the same. Whereas through its predecessorsin- interest Abbott is in the market since the year 1988 defendant entered the market somewhere in the year 2012 when the suit was filed. We note that the defendant has consciously not disclosed in the written statement the day it started selling the goods in the market. From the documents filed by the defendants we find that it applied to the Registrar of Trademarks for registration of the trademark ‘AMAFORTEN’ on June 17, 2009 and was granted registration on July 12, 2011. Tested on the legal principles laid down by the Supreme Court in the case of Wander Ltd. & Anr. Vs. Antox India P.Ltdreported as 1990 (Supp.) SCC 727, we find no infirmity in the view taken by the learned Single Judge and thus would dismiss the appeal.

Easygroup IP Licensing Ltd & Anr V. Easyjet Aviation Services Pvt Ltd &Anr[DEL]CS(OS) 157/2010 Vipin Sanghi, J. [Decided on 19/08/2013]

Brief facts:

This suit for grant of permanent injunction restraining infringement of registered trademark, passing off, delivery up and damages has been filed by Plaintiffs no 1 and 2, which are companies incorporated under the laws of England and Wales against defendant no 1, a company incorporated under the Companies Act 1956 and defendant no 2, who is the director of defendant no 1, in respect of the alleged infringement and passing off of the plaintiff’s registered trademark “easyJet”.

The plaintiff no 1 is the owner and plaintiff no 2 is the licensed user of the registered trademark “easyJet” (hereinafter referred to as the suit trademark). The suit trademark was adopted by plaintiff no 2- which is wholly owned by EasyJet, plc, a company listed on the London Stock Exchange; in the year 1995 in respect of a low cost carrier airline operated by plaintiff no 2. In the year 2000, on account of reorganization of business, the suit trademark was assigned by plaintiff no 2 to plaintiff no 1. Subsequently via Brand License Agreement dated 05.11.2000, plaintiff no 1 licensed the use of the suit trademark to plaintiff no 2.

The plaintiffs allege that the defendant no. 1 company having its principal place of business in Mumbai, is trading in the name and style of “EasyJet Aviation Services Limited”. It is engaged in facilitating air charters, air craft management as well as buying and selling of aircrafts as middlemen. The plaintiffs allege that defendant no 1 is malafidely using the aforesaid trademark “EasyJet” in relation to services that are identical to those covered by the classification in which the plaintiffs mark “easyJet” is registered.

Decision: Suit decree

Reason:

A perusal of the trademark registration certificate, Exhibit PW1/36, of the plaintiffs’ reveals that the plaintiff’s mark “easyJet” was first registered in the United Kingdom in 1995 in respect of class several classes including class 39 which covers the services offered by the plaintiffs and the defendants. Subsequently, the suit trademark was granted registration in India in various classes from 2001 onwards- in class 16 vide Exhibit PW 1/44 dated 07.02.2001 and the most important for the purpose of this suit being class 39, registration whereof was granted on 07.12.2004 vide Exhibit PW1/41. As aforementioned, class 39 includes, but is not restricted to transportation of goods, passenger and travelers by air; airline and shipping services; airport check in service; chartering of aircraft; rental and hire of aircraft etc.

The plaintiff’s website www.easyJet.com, went live in 1995. The said website has been accessible to Indians who wish to travel on the plaintiff no 2’s airline on its operational routes abroad since 1998. A significant aspect of the plaintiff’s business model is its elimination of ticketing agents through its website that provides customers the convenience of booking tickets online as far back as 1998. Exhibit PW1/15 is an article dated 08.03.2001 in the magazine “Economist” stating that several airlines, including the plaintiff no 2’s airline, sell up to 90% of their tickets online.

Exhibit PW 1/29 is a printout from an Indian online travel portal www. cleartrip.com showing the details, routes, destinations, flights and company information of the plaintiff’s operations. The website cleartrip.com also provides a link to the plaintiff’s website. This evidences the fact that even besides the plaintiff’s own website, Indians can book tickets on the plaintiff no 2’s airline via Indian online travel portals too. Exhibit PW1/10 is a summary of visits from Indian IP addresses to the plaintiff no 2’s website. The same shows that between 2008-2010, 28416 bookings were made by clients accessing the website from India.

Furthermore, Exhibit PW1/14 is an article dated 16.11.2000 in the magazine “The Economist” referring to several low cost airlines including plaintiff no 2 and its plan to increase the density of its flights. Exhibit PW 1/19 is a list of top 5 best companies in marketing according to “FORBES Asia” magazine featuring the plaintiff no 2 at fifth position. Exhibit PW1/21 is an article dated 23.07.2001 in International magazine “TIME” discussing the easy group’s successful marketing strategy. Similarly exhibits PW1/22, PW1/23 and PW1/24 are write ups in “TIME” magazine about low cost carriers and the plaintiff no 2 airline dated 26.11.2001, 22.05.2002 and 04.08.2002 respectively. The aforesaid demonstrates that the plaintiff no 2 has consistently been covered in international news and magazines as a successful marketing phenomenon. In Allergan Inc v. Milmet Oftho Industries, 1997 2 CAL LT, it was held that internationally established reputation is enough to entitle the plaintiff to sue in India, even if he has no business in India.

Keeping in view the aforesaid, I am of the view that the plaintiffs have established prior use of the trademark since 1995 – when it was first registered, and since 1998 when their services became accessible to Indians via their website. In Caesar Park Hotels & Resorts v. Western Hospitality Services, AIR 1999 Mad 396, it was held that if the plaintiffs have customers in a country, it can be presumed that they enjoy a reputation in that country. Owing to the fact that Indians could access the plaintiff no 2Ÿs services through its website as far back as in 1998, I am of the view that the same is sufficient to constitute prior use. By virtue of Section 28 of the Act, a registered proprietor of the trademark has the exclusive right to the use of the trademark in relation to the goods and services in respect of which the trademark is registered and to obtain relief against infringement of the trademark.

The defendants are using the impugned trademark in respect of identical services covered under class 39 in which the plaintiffs enjoy their registration. Therefore, the action of the defendants squarely amounts to infringement under Section 29. Having already established that the plaintiffs enjoy a considerable amount of reputation, there is no iota of doubt that the use of the suit trademark by the defendants in respect of identical services is likely to cause confusion and mislead the public into believing that the services of the defendant are associated with the plaintiff no 2’s airline.

It is also pertinent to note that the suit trademark is a coined word. No explanation has been offered by the defendants as to why they chose the suit trademark. The defendants have chosen not to contest the present proceedings and, therefore, the only valid inference that can be drawn is that the defendants adopted the impugned trademark to ride on the plaintiffs’ goodwill and popularity.

In the present case too, the plaintiff no 2 and the defendants are operating in the same sphere of activity. The services provided by the plaintiff no 2 and defendants are identical in nature. Therefore, the likelihood of confusion and deception is strong on account of the public at large associating the defendants’ services to be those offered by the plaintiff no 2. The acts of the defendants in using the impugned trademark coupled with a lack of plausible explanation offered by the defendants for the same, leads to the conclusion that the defendants are in fact passing off their services as those of the plaintiffs in an attempt to cash in on the plaintiff’s reputation worldwide as well as in India. Accordingly, the suit is decreed in favour of the plaintiffs.

Hawkins Cookers Ltd v. Murugan Enterprises [DEL] RFA (OS) 09/2008 Pradeep Nandrajog & Siddharth Mridul, JJ. [Decided on 13/04/2012]

Brief facts:

The appellant is the registered proprietor of the trademark HAWKINS in respect of pressure cookers and parts thereof, including gaskets. The respondent manufactures and sells gaskets under the trademark MAYUR, but on the packaging material indicating “Suitable for: Hawkins Pressure Cookers”. Whereas the words suitable for and Pressure Cookers are printed in black colour, the word Hawkins is printed in red colour and thus it is apparent that the intention is that the word Hawkins catches the eye.

The appellant alleges that by so writing on the packaging material, the respondent is infringing upon its registered trademark. It is the case of the appellant that the gaskets pertaining to pressure cookers are not manufactured by the respondent for any particular brand of pressure cooker, much less Hawkins Pressure Cookers and that the gaskets of pressure cookers can fit any pressure cooker manufactured by any manufacturer, for the reason all pressure cookers have the same dimensions of the mouth and hence the lid size, the only correlation is to the capacity of a pressure cooker i.e. 1 liter, 2 liter etc. Thus, the appellant contends that the respondent cannot use the word Hawkins, which is the trademark of the appellant, in relation to the goods gaskets, forming part of Hawkins pressure cookers for the reason it is not reasonably necessary for the respondent to indicate that the gasket manufactured by it is  adaptable to the pressure cookers manufactured by the appellant.

The Single Judge has proceeded on the basis, that as per the evidence, gaskets manufactured by the respondent are specially made, to be fitted in Hawkins Pressure Cookers, a fact noted by the learned Single Judge in paragraph 64 of the impugned decision. As per the appellant, this is not so. The gaskets manufactured by the respondent, as also other manufacturers, are neither designed, nor are capable of being designed, to be used in any particular kind of pressure cooker, for the reason all pressure cookers are so designed that the mouth of the pressure cooker and the corresponding lid is of same dimension; the only variation being with respect to the capacity of a pressure cooker. In other words, a gasket pertaining to a 1 liter capacity pressure cooker would fit all pressure cookers manufactured by all manufacturers.

Decision: Appeal allowed. Defendant directed to modify the package.

Reason:

Now, at the heart of the matter in dispute in the instant appeal is when would it be a case of the use of the trademark being reasonably necessary in order to indicate that the goods are so adapted? The answer has to be found in the meaning of the two words reasonably necessary. Of the various meanings of the word necessary, one meaning is inherent in the situation. Of the various meanings of the word reasonable one meaning is just. Thus, the twin word reasonably necessary would mean that inherent in the situation it would be just; and in the context of Clause (d) of sub-section (2) of Section 30 of the Act, it would mean that where the goods which are claimed to be adaptable to some other goods would entitle the manufacturers of the goods which are adaptable to so indicate by reference to the trademark of the other goods provided it is just to so do and this would mean that the goods claimed to be adaptable are specifically manufactured to be used as a part of the other goods alone. This will not apply where the goods are capable of adaptable use to all goods manufactured by different manufacturers to which they are adaptable. In said circumstance to indicate on the goods that they are adaptable only to the goods of only one manufacturer would be a clear violation of the trademark of the said manufacturer and Section 30 (2) (d) would not come into aid.

Let us illustrate. A manufactures pump sets, having a motor, and a pulley, through the rotation of which, the pump is made to mechanically lift water. The motor, the pulley and the pump are three separate distinct constitutive elements of the pump set. The distance between the motor and the pump is unique to the pump set manufactured by A. B manufactures only pulleys.

These are used by various manufacturers of pump sets, saw mills, flour mills etc. i.e. wherever electrical energy has to be converted into mechanical energy. The pulleys manufactured by B, which are adaptable to the pump sets manufactured by A, would obviously require B to so inform the consumer, and in such situation, if on the packaging material B were to indicate that the particular pulleys manufactured by him are adaptable to the pump sets manufactured by A this being the only way in which B can inform the buyer, no infringement of A’s trade mark would result. To simply state, if A was to sell his pump sets under the trademark CHAMPION, B would be perfectly justified in writing or printing on the packaging material: Suitable for champion pumps. Of course, this would be subject to the condition that B prominently displays his trademark and does not give undue prominence to the word CHAMPION. But, if all the pump sets manufactured by different manufacturers have same distance between the motor and the pump and identical dimensional pulleys are used in all the pump sets, it would not be a case where B would be entitled to print on the packaging material that the pulley manufactured by him is suitable for a particular brand of pump sets. We note that the learned Single Judge has correctly noted the law: that if in the sale it becomes reasonably necessary for the manufacturer of adaptable goods, to refer to the trademark of the relatable goods, such reference would not amount to an infringement of the trademark under which the relatable goods are sold, but has misapplied the evidence on record. The error committed is by proceeding upon the premise that the evidence establishes that the respondent manufactures gaskets specifically for the special sizes of pressure cookers manufactured by the appellant, ignoring that the evidence is to the contrary. Clarifying that the undisputed evidence brings out that gaskets pertaining to pressure cookers, irrespective of the brand or the manufacturer, are identically designed for pressure cookers of different sizes i.e. smallest gaskets for one liter pressure cookers, bigger gaskets for two liter pressure cookers and yet bigger gaskets for three liter pressure cookers and so on; and thus a gasket of a particular size would fit the lid of all pressure cookers manufactured by different manufacturers of the same relatable size, would mean that it is not reasonably necessary to indicate, for the benefit of the consumer, that the adaptable goods relate to only one particular brand of pressure cookers.

It also needs to be highlighted that it has escaped the attention of the learned Single Judge that while writing: Suitable for Hawkins Pressure Cookers, the respondent has given undue prominence to the word Hawkins by printing it in a distinct red colour and the remaining words of the sentence are printed in black colour. Clarifying that the respondent, may, if it so chooses, indicate on the packaging material of the gasket that the gasket is suitable for all pressure cookers, as is being done by other manufacturers of gaskets, we allow the appeal.

Larsen & Toubro Limited (L&T) v. Leuci Communications & Ors [DEL] CS (OS) No. 1958/2006 V.K. Jain, J. [Decided on 01/02/2011]

Brief facts:

The plaintiff-company holds copyright in respect of trademark/logo LT (in a circle) vide Registration No.1169145 dated 24th January, 2003 under Class 9 under 4th Schedule to Trademarks Act, 1999. The plaintiff-company has a number of subsidiary companies which also use the name Larsen & Toubro as a part of their corporate name. The trademark/logo LT is registered in the name of the plaintiff No. 1 also in various other classes viz. 2, 3, 4, 5, 7, 8, 9, 10, 11, 12,1 3, 14, 15, 16, 17,18,21,22,23, 24, 25, 26, 27, 29, 31 and 33. It is alleged that on 25th September, 2006, Mr Santanu Das, Sales Engineer in the Jamshedpur office of the plaintiff company purchased a charger from a shop in Muzaffarpur in Bihar and found that though the charger was made in China, L&T logo (in a circle) was printed on the top of the carton and it was also found engraved on the charger itself. It is alleged that use and adoption of the mark L&T by the defendants is likely to cause confusion and give an impression to the public that the defendants are associated with the plaintiff company.

It is also alleged that the defendants have adopted/ copied the mark of the plaintiff in respect of goods mentioned in Class 9 which are covered by the plaintiff’s registered mark and have thereby infringed the said trademark. It is also claimed that the whole intention of the defendants in adopting and using the trademark/logo of the plaintiff is to pass off their products as those of the plaintiff and to represent to the public that they are in some way connected with the plaintiff-company. The plaintiff has sought an injunction restraining the defendant from using its trademark/logo LT or any other mark which is deceptively similar to the registered trademark/logo of the plaintiff-company. The plaintiff has also sought injunction restraining the defendant from passing off its goods/products as those of the plaintiff-company. Damages amounting to Rs 20,01,600/- have also claimed by the plaintiff from the defendants. The plaintiff has also sought destruction of the infringing goods and packing material, etc.

Decision: Suit decreed

Reason:

The registration of trademark/logo LT (in a circle) has been granted to the plaintiff-company not only in respect of telephones, but also their parts and accessories. It is difficult to dispute that mobile phones would be included in the list of telephones. A charger of a mobile telephone is an essential accessory and the mobile telephone cannot be charged without using the charger meant for the purpose. Hence, it cannot be disputed that the plaintiff-company holds copyright in mark/ logo LT (written in a circle) in respect of mobile phone chargers and this right is being held by the plaintiff-company continuously since 24th January, 2003, the registration being valid for 10 years.

A perusal of the carton in which the charger was purchased by an employee of the plaintiff-company would show that the mark/logo LT (in a circle) of the plaintiff-company has been simply re-produced on the carton. Though use of the word along with the mark/logo LT in a circle gives an impression that the mark/logo used on the carton was a registered mark/ logo of the manufacturer of the product, the defendants have not come forward to contest the suit and to claim any copyright in the aforesaid mark/logo. Since the plaintiff-company holds copyright in the mark/logo LT (in a circle) in respect of telephone accessories which would include a mobile phone charger, the defendants have no right to use the aforesaid mark/ logo on the carton in which the charger is being sold by them.

A trademark is infringed if either the same mark or a mark deceptively similar to that mark is used, without a license from its proprietor. In the case before this Court, the mark/ logo being used on the carton of the charger being a reproduction of the registered trademark/logo of the plaintiff company, the defendants have infringed the registered trademark/logo of the plaintiff by using that mark on the carton of their charger.

The mark LT, on account of its continuous user by the plaintiff company and considering the multifarious nature of the activities in which the plaintiff company is engaged, has come to be so associated with the plaintiff company and, therefore, anyone coming across a product bearing the name/logo LT is likely to get confused and assume that either this product was being manufactured and/or marketed by plaintiff company and/or that the plaintiff company was somehow or the other associated with the manufacturing/marketing of that product.

If another company uses this trademark/logo of the plaintiff company, the customer, particularly if he happens to be an unwary customer is likely to assume that the company manufacturing and/or marketing the product bearing the mark/ logo LT was either a group company/subsidiary company of the plaintiff or had some kind of arrangement/agreement with it for use of the aforesaid mark/logo.

For the reasons given in the preceding paragraphs, defendant Nos. 7 and 8 are hereby restrained from manufacturing, selling, exporting, distributing or marketing any mobile charger using the registered mark/logo LT (in a circle) of the plaintiff company either on the product or on its packaging. Defendant Nos. 7 and 8 are also directed to destroy within eight weeks all the chargers and packaging, which bear the registered mark/ logo of the plaintiff company. The plaintiff company has not proved any actual damages.Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing of their goods and/or services as those of that well known brand.

Considering the nature of the infringement and with a view to dissuade others from indulging into such activities, it is imperative that some punitive damages are awarded to the plaintiff company. I, therefore, award punitive damages amounting to Rs.50,000/- to the plaintiff company against defendant Nos. 7 and 8.

T.V. Venugopal v. Ushodaya Enterprises Ltd. & ANR [SC] Civil Appeal Nos.6314-15 of 2001 Dalveer Bhandari & Radhakrishnan, JJ. [Decided on 03/03/2011]

Brief facts:

The appellant is the sole proprietor of a firm carrying on business inter alia as manufacturers of and dealers in incense sticks (agarbathis) in the name and style of Ashika Incense Incorporated at Bangalore. The appellant started his business in the year 1988 and adopted the mark ‘Ashika’s Eenadu’. According to the appellant the word ‘Eenadu’ in Kannada language means ‘this land’. In Malayalam and Tamil language it conveys the same meaning. In Telugu language it means ‘today’. In consonance with the above meaning the appellant devised an artistic label comprising a rectangular carton in bottle green background with sky-blue border and in the centre, in an oval tricolour, the word ‘Eenadu’ is written. The respondent company, who was engaged in the business of publishing a newspaper in Telugu entitled as ‘Eenadu’, served a cease and desist notice on the appellant which was replied by the appellant on 8.3.1995.

The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark in the Court of Second Additional Chief Judge, City Civil Court, Hyderabad. The respondent company therein claimed that they have been in the business of publishing a newspaper, broadcasting, financing and developing a film city.

The City Civil Court had granted an ex-parte ad interim injunction restraining the appellant from using the expression ‘Eenadu’ and the same was confirmed on 27.12.1999. On appeal, the High Court of Andhra Pradesh suspended the interim injunction and permitted the appellant to dispose off their finished products to the tune of `1 crore and also permitted the appellant to produce goods that were in the process of manufacture to the tune of ` 78 lakhs.

Meanwhile, the trial court partially decreed the suit of the respondent company. The appellant was injuncted from using the words ‘Eenadu’ in the State of Andhra Pradesh only. Both the parties filed appeals before the High Court of Andhra Pradesh. The learned Single Judge disposed of both the appeals by a common judgment/order where under the appeal filed by the respondent company was dismissed and the appeal filed by the appellant was allowed.

Aggrieved by the said order of the learned Single Judge, the respondent company filed Letters Patent Appeals before the Division Bench of the High Court, which allowed the appeal decreeing the O.S. No.555 of 1999. The Appellant appealed to the Supreme Court.

Decision: Appeal disposed off.

Reason:

We have heard the detailed and comprehensive arguments advanced by the learned counsel for the parties. We place on record our appreciation for the able assistance provided by the learned counsel for the parties in this case.

We have also carefully examined relevant decided Indian, English and American cases.

The respondent company’s mark ‘Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. ‘Eenadu’ newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word ‘Eenadu’ may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products and services provided by the respondent company. The appellant is a Karnataka based company which has started manufacturing its product in Bangalore in the name of ‘Ashika’ and started selling its product in the State of Andhra Pradesh in 1995. The appellant started using the name ‘Eenadu’ for its Agarbathi and used the same artistic script, font and method of writing the name which obviously cannot be a co-incidence. The appellant company after adoption of name ‘Eenadu’ accounted for 90% of sale of their product Agarbathi.

On consideration of the totality of facts and circumstances of the case, we clearly arrive at the following findings and conclusions:

(a) The respondent company’s mark ‘Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company’s products an services are correlated, identified and associated with the word ‘Eenadu’ in the entire State of Andhra Pradesh. ‘Eenadu’ means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark ‘Eenadu’;

(b) The adoption of the words ‘Eenadu’ is ex facie fraudulent and mala fide from the very inception. By adopting the mark ‘Eenadu’ in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;

(c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct of the appellant;

(d) Permitting the appellant to sell his product with the mark ‘Eenadu’ in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling Agarbathies marked ‘Eenadu’ as to be designed or calculated to lead purchasers to believe that its product Agarbathies are in fact the products of the respondent company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent company. In such a situation, it is the bounden duty and obligation of the court not only to protect the goodwill and reputation of the respondent company but also to protect the interest of the consumers;

(e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers;

(f) Permitting the appellant to carry on his business in the name of ‘Eenadu’ in the State of Andhra Pradesh would lead to eroding extra-ordinary reputation and goodwill acquired by the respondent company over a passage of time;

(g) Appellant’s deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant.

(h) Permitting the appellant to sell his product with the mark ‘Eenadu’ would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company.

(i) Honesty and fair play ought to be the basis of the policies in the world of trade and business. The law is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties. This approach is in consonance with protecting proprietary rights of the respondent company.

Consequently, the appeals are disposed of in terms of the aforesaid observations and directions.

M/s.Bademiya, Mumbai & Ors v. Mubin Ahmed Zahurislam [BOM] Notice of Motion No.386 of 2011 in Suit No.292 of 2011 S J Kathawalla, J. [Decided on 25/03/2011]

Brief facts:

In the present Notice of Motion the plaintiffs have prayed for an order and injunction restraining the defendant from in any manner using in relation to any business of manufacturing and selling or dealing in eatables the trading name “BADEMIYAN” or any other trading name consisting of the word “BADEMIYA” written in any script or the impugned trademark and the impugned logo mark as appearing in the photograph Exhibit-H to the plaint, or any other deceptively similar mark so as to infringe the plaintiffs registered trademark bearing number 641759 in Class-29 and the plaintiffs’ registered trademark bearing number 1738175 in Class-42 and to further restrain the defendant from passing off their goods and/or services as those of the plaintiffs. By consent of the parties the Notice of Motion is at the ad-interim stage taken up for final hearing.

The defendant contended that (a) that the plaintiffs’ partnership firm is unregistered and hence the suit is not maintainable;(b) that the plaintiffs’ trademark is registered under Class-29 for goods and not under Class-42 for rendering services and as the defendant is rendering the services by providing food items, the plaintiffs’ trademark is not infringed by using the impugned trademark;(c) that the plaintiffs are carrying on an illegal business without any licenses; and (d) that the defendant’s impugned mark is distinct and different from the plaintiffs’ trademark.

Decision: Injunction granted.

Reason:

The question whether Section 69(2) is a bar to a suit filed by an unregistered firm even if a statutory right is being enforced or even if only a Common Law right is being enforced came up directly for consideration in this Court in M/s. RaptokasBrett Co. Ltd. v. Ganesh Property, [1998] SCC 184. In that case, the Bench clearly expressed the view that Section 69(2) cannot bar the enforcement by way of suit by an unregistered firm in respect of a statutory right or a common law right. On the facts of that case, it was held that the right to evict a tenant upon expiry of the lease was not a right ‘arising from a contract’ but was a common law right or a statutory right under the Transfer of Property Act. The fact that the plaint in that case referred to a lease and to its expiry, made no difference. Hence, the said suit was held not barred. It appears to us that in that case the reference to the lease in the plaint was obviously treated as a historical fact. That case is therefore directly in point. Following the said judgment, it must be held in the present case too that a suit is not barred by Section 69(2) if a statutory right or a common law right is being enforced.

The next question is as to the nature of the right that is being enforced in this suit. It is well settled that a passing off action is a common law action based on tort (vide) Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company and Anr., [1997] 1 SCC99. Therefore, in our opinion, a suit for perpetual injunction to restrain the defendant not to pass-off the defendant’s goods as those of plaintiff’s by using the plaintiffs’ trade mark and for damages is an action at common law and is not barred by Section 69(2). Likewise, if the reliefs of permanent injunction or damages are being claimed on the basis of a registered trade mark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is, in our view, not barred by Section 69(2). As regards the contention of the defendant that the plaintiffs do not possess any licences or the permissions to carry on the business at the food stall situate at Colaba, Mumbai, the plaintiffs have tendered a compilation of licenses set out in paragraph 13 above. The said licences show that the plaintiffs are not carrying on the business unlawfully or illegally. An attempt has been made on behalf of the defendant to contend that the plaintiffs are not operating within the scope of the said licences. However, the said issues cannot be decided in this suit and it would be open to the defendant to raise the same before the appropriate authorities/forums.

As regards the contention of the defendant that Class-42 is amended, it is true that pursuant to the said Notification, the description “services for providing food and drink…” is shifted from Class-42 to Class-43. However, prima facie I am of the view that until the plaintiffs apply for the purpose of re-classification of the plaintiffs existing registration in Class-42 and the same is considered and dealt with, the plaintiffs cannot be deprived of any benefit in respect of the existing registration.

The impugned trademark of the defendant is thus visually and phonetically identical or deceptively similar to the plaintiffs registered trademarks. The defendant is, therefore, guilty of infringing the plaintiffs’ trademarks registered under Clauses- 29 and 42 of the Trademarks Act, 1999.

Greaves Cotton Limited v. Mohammad Rafi & Ors. [DEL] CS (OS) No. 395/2008 V.K. Jain, J. [Decided on 03/06/2011]

Brief facts:

This is a suit for permanent & mandatory injunction, damages, rendition of accounts and delivering up of infringing material. The plaintiff company is engaged in the manufacture of a wide range of industrial products including diesel engines, generating sets, agro equipments, construction equipments and road construction equipments. It is claimed that the word/mark GREAVES is an essential and prominent feature of plaintiff s trade name, corporate name and business style and the trademark GREAVES is the surname of the founder of the plaintiff s predecessor GREAVES COTTON AND COMPANY LIMITED. It is alleged that defendant No.1 who is the proprietor of defendant No.2, made an application for registration of the trademark GREAVES INDIA claiming use of aforesaid mark since 1.12.2004 in respect of self priming pump, monobloc pump, jet pump, shallow well pump, coupled pump, high head coupled pump, diesel pump, which are exactly of the same type as the pumps of the plaintiff company. The plaintiff company sent a legal notice dated 26.12.2007 to the defendant No.1 calling upon it to cease and desist from using the aforesaid mark. In his reply, the defendant claimed to have acquired popularity and publicity through use since 1.12.2004. It is alleged that defendant No.1 is engaged in a business which is similar to the business of the plaintiff company and is dealing in products as that of the plaintiff company, the use of the aforesaid mark by the defendant No.1 would result in causing deception in the market and is likely to lead the purchaser to believe that the products being sold under the marks GREAVES INDIA are manufactured, sold and marketed bythe plaintiff company or that the use of the aforesaid mark has been licensed/authorized by the plaintiff company. The defendant No.1 has contested this suit.

Decision: Suit decreed.

Reason:

It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the plaintiff. When the mark of the defendant is not identical to the mark of the plaintiff, it would be necessary for the plaintiff to establish that the mark being used by the defendant resembles his mark to such an extent that it is likely to deceive or cause confusion and that the user of the impugned trademark is in relation to the goods in respect of which the plaintiff has obtained registration in his favour. It will be sufficient if the plaintiff is able to show that the trademark adopted by the defendant resembles its trademark in a substantial degree, on account of extensive use of the main features found in his trademark. In fact, any intelligent person, seeking to encash upon the goodwill and reputation of a wellestablished trademark, would make some minor changes here and there so as to claim in the event of a suit or other proceeding, being initiated against him that the trademark being used by him, does not constitute infringement of the trademark, ownership of which vests in some other person. But, such rather minor variations or distinguishing features would not deprive the plaintiff of injunction in case resemblance in the two trademarks is found to be substantial, to the extent that the impugned trademark is found to be similar to the registered trademark of the plaintiff. But, such malpractices are not acceptable and such a use cannot be permitted since this is actuated by a dishonest intention to take pecuniary advantage of the goodwill and brand image which the registered mark enjoys, it is also likely to create at least initial confusion in the mind of a consumer with average intelligence and imperfect recollection. It may also result in giving an unfair advantage to the infringer by creating an initial interest in the customer, who on account of such deceptive use of the registered trademark may end up buying the product of the infringer, though after knowing, either on account of difference in packaging etc. or on account of use of prefixes or suffixes that the product which he is buying is not the product of the plaintiff, but is the product of the defendant.

As noted earlier, the defendant No.1 himself has admitted in his cross examination that he was manufacturing mono-block pumps, jet pumps, shallow well pumps, coupling pumps, high head pumps, and diesel pumps under the trade name GREAVES INDIA . It has also come in deposition of PW- 1, that the defendants are manufacturing self priming pump, mono-bloc pump, jet pump, shallow well pump, coupled pump, high head coupled pump, diesel pump etc. and in his application for registration also the defendant No.1 has claimed use of the mark “GREAVES INDIA” in respect of the above referred products which according to PW-1 are exactly of the same type as are the pumps of the plaintiff company. It thus, stands proved that the mark “GREAVES INDIA” is being used by the defendant No.1 in respect of the same products for which the mark Greaves is being used by the plaintiff company. The defendant before this Court has thus, been manufacturing and selling the same product under the trade name “GREAVES INDIA”, which the plaintiff company has been manufacturing and selling under its registered trade mark “GREAVES”. By using the word “GREAVES INDIA” the defendant No.1 lifted and adopted the whole of the registered trademark of the plaintiff company, thereby causing infringement of that trade mark.

Mere use of the word “INDIA” would make no difference since the word “GREAVES” is not only an essential but also the main component of the trademark “GREAVES INDIA” being used by the defendant No.1. Use of the word “INDIA” as a suffix and not as a prefix is also a strong indicator that the defendant No.1 wanted to encash upon the popularity, goodwill and reputation of the word “GREAVES” engines not only in India but in many other countries. In fact had the defendant No.1 used the word “INDIA” as prefix even that, in my view would have constituted infringement, in facts and circumstances of this case. It would be pertinent to note here that the defendant No.1 has not given any reason or explanation for use of the word “GREAVES” which is the most essential component of his trademark. During cross examination, he could not even give any meaning to the word “GREAVES”. This clearly shows that the adoption of the word “GREAVES” by the defendant was dishonest, actuated with the intention to encash upon the tremendous reputation which the registered trademark of the plaintiff enjoys in the market. It would also be appropriate to note here that “GREAVES” is not a dictionary word and is alleged to be the surname of the founder of the plaintiff company. Neither deletion of a part of a registered trademark nor the prefix or suffix of another word to it would validate the use of the registered mark by an unlicensed user, once it is shown that the part used by the infringer is an essential part of the registered trademark. It also in interest of the consumer that a well established brand such as “GREAVES” is not to be allowed to be used by another person. A person purchasing pumping sets being sold by the plaintiff company under the name “GREAVES”, when he comes across the product of the defendant No.1 being sold under the trade name “GREAVES INDIA”, on account of imperfect recollection and his not having the product of the plaintiff with him at that time, may form an impression that both the products emanate from the same source and that is why both of them are using the word “GREAVES” for selling similar products. This may cause confusion in the minds of the consumers. Also, if the quality of the product of the defendant No.1 is not found to be as good as the quality of the product of the plaintiff, the consumer may feel cheated; he having paid the price which the product of the plaintiff commands in the market and he may also form an opinion that the quality of the product of the plaintiff had gone down and that is why the product purchased by him was found to be of inferior quality. For the reasons given in the preceding paragraphs, the plaintiff is entitled to injunction against use of the trademark “GREAVES” by the defendant No.1. The plaintiff is also entitled to mandatory injunction directing the defendant No.1 to withdraw his application submitted to trade mark registry for registration of the mark “GREAVES INDIA”. The issues are decided against the defendant No.1 and in favour of the plaintiff.

In view of my finding on other issues, the plaintiff is entitled to injunction and damages as stated above in this judgment. A decree for perpetual injunction is hereby passed restraining the defendant No.1 from manufacturing selling, offering for sale advertising or promoting any self priming pump, monobloc pump, jet pump, shallow well pump, coupled pump, high head coupled pump, diesel pump under the trade mark “GREAVES INDIA” or any other mark which is identical or deceptively similar to the registered trademark GREAVES” of the plaintiff. A decree for mandatory injunction is also passed directing the defendant No.1 to withdraw its application No. 1387589, submitted by it to trademark registry for the registration of the trademark “GREAVES INDIA”, within six weeks. A decree for damages amounting to Rs.1 lakh is also passed in favour of the plaintiff and against defendant No.1. The defendant No. 2 is not a legal entity and is only a trade name adopted by defendant No.1. Hence, the suit against defendant No.2 is dismissed. If the amount or damages is not paid within six weeks, the plaintiff will also be entitled to pendente lite and future interest @ 6% p.a. on the amount of damages.

Hindustan Unilever Limited v. Ashique Chemicals & Ors [BOM] Notice of Motion No. 926 of 2010 in Suit No. 862 of 2010 S.J. Vazifdar, J. [Decided on 08/08/2011]

Brief facts:

The plaintiff seeks a perpetual injunction, restraining the defendants from using, in relation to soaps or detergents, the impugned mark “SunPlus” or the word “Sun” with any prefix or suffix or any other deceptively similar mark or the impugned labels containing the words “Sunplus” or any other deceptively similar labels so as to infringe the plaintiff’s registered trademarks or so as to pass off the defendants’ goods as and those of the goods of the plaintiff. The plaintiff is the registered proprietor of the words marks “Sun”, “Sunlight” and “Sunsilk” under class 3. The marks “Sunlight” and “Sunsilk” are associated with the mark “Sun”. The plaintiff is also the registered proprietor of the label marks, which include prominently the word “Sunlight”. The plaintiff has admittedly not used the mark “Sun” in India, but the other marks are associated with the word mark “Sun”.

Decision: Suit dismissed.

Reason:

The defendant has been using the mark since the year 1997. The defendant has developed a reputation in the market on its own in the State of Kerala. There is nothing to suggest that in the State of Kerala, the mark “Sunlight” had acquired such a reputation that the plaintiff derived advantage merely by trading on the same. The mark “Sun” has not been used for over 60 years. There is a possibility that if the plaintiff’s mark had acquired reputation in Kerala, it would have come across the plaintiff’s mark which has been widely advertised in a variety of ways, including on television channels, hoardings and in magazines. In that event, the plaintiff would have noticed the defendant mark and adopted proceedings earlier. As it is, the defendants have used the mark for almost fifteen years now. In the result, the plaintiff’s action for infringement of the registered mark “Sun” cannot succeed. Nor can the action for passing off in respect of the mark “Sun” succeeds as admittedly it has never been used.

The next question is whether this action can succeed in respect of the mark “Sunlight”. I do not consider the defendant’s mark “Sunplus” to be deceptively similar to the plaintiff’s mark “Sunlight”. The mere fact that the marks are prefixed by the letters “Sun” would not indicate deceptive similarity. The marks “Sunlight” and “Sunplus” are phonetically and visually distinct. Moreover, the word SunPlus is written in the stylized manner, I have described earlier, reducing the possibility of confusion. Further, in both the marks the suffix is pronounced and distinct from the prefix. Thus, on the one hand, the word “Sun” has not been used for over 60 years and on the other, there is no deceptive similarity between the words “Sunplus” and “Sunlight”. Thus, even if inspection had been taken by the defendants of the records of the Registrar of Trade Marks, it would have made no difference.

In the circumstances, the Notice of Motion is dismissed with costs fixed at `0, 000/-.

South African Breweries International (Finance) BV & Anr v. Mohan Goldwater Breweries Ltd. & Anr [DEL] C.S(OS).No. 1073/2002 V.K. Jain, J. [Decided on 31/10/2011]

Brief facts:

Plaintiff No. 1 is a company registered in Netherlands, whereas plaintiff No. 2 is a company registered in India and is a joint venture company, promoted by SAB Group, to which plaintiff No.1-company belongs. The trademark CASTLE, which was originally adopted and used by Charles Glass, doing business as Glass & Company in respect of beer, in the year 1884. In 1895, Glass & Company was taken over by the South African Breweries Limited, which assigned worldwide rights in the trademark CASTLE to Avalon International Incorporate, which subsequently changed its name to SABMARK International Incorporated. Subsequently, SABMARK International assigned those rights to South African Breweries International Holdings Inc., which, in turn, assigned them to plaintiff No. 1- Company. Plaintiff No. 1 claims registration of the trademark CASTLE and CASTLE label in respect of beer in a large number of countries mentioned in para 6 of the plaint and also claims sale of US$ 1billion. According to the plaintiffs, the trademark CASTLE is a well-known mark in India and is well-recognized worldwide on account of its extensive availability in various countries and duty free shop of various airports. Plaintiff No. 1 also claims to be sponsoring the South African Cricket team for past 10 years and claims that on account of such wide publicity, Indians would be familiar with the trademark CASTLE. It is also alleged that the plaintiffs have been selling beer in India since 1974, under the trademark CASTLE.

Plaintiff No. 1 applied for registration of CASTLE (label) on 29th April, 1995 and the word mark CASTLE on 6th February, 1996. The registrations have since been granted during pendency of the suit. A notice was sent by the defendants to the plaintiff claiming ownership of the trademark CASTLE PILSNER in respect of beer. They also claimed that the trademark OLD CASTLE and CASTLE were registered in their favour on 30th May, 1972 and 22nd October, 1973 respectively and also claimed that the plaintiffs were passing off their goods as those originating from the defendants and, thereby infringing their registered trademark. On enquiry, the plaintiffs came to know that the trademark registrations in favour of the defendants had been removed from the record of Registrar of Trademarks and in fact, the defendants never sold any product bearing the trademark CASTLE. The plaintiffs have sought an injunction, restraining the defendants from manufacturing, selling, offering for sale or advertising any beer or alcoholic beverages, using the trademark CASTLE. They also sought delivery up of all the goods, packaging material bearing the impugned mark besides damages of Rs 20,00,000/-.

Decision: Permanent injunction granted.

Reason:

Coming to the merits of the case, it has come in the affidavit that the registration of trade marks in favour of defendant No.1, vide registration Nos. 280552 and 291623 had been removed from the trade mark register. The relevant extract from Trade Mark Journals notifying removal of these trademarks was advertised are Ex.PW-1/12 & PW-1/13. A perusal of the advertisement Ex.PW-1/12 in Trade Mark Journal dated 01.01.1992 would show that registered mark No.280552 was removed from the register for non-payment of renewal fee from 01.11.1991 to 16.11.1991. 280552 is the registration whereby the trade mark OLD CASTLE was registered in the name of defendant No.1. Ex.PW-1/13 is the copy of Trade Mark Journal dated 16.01.1991 whereby removal of registration No.291623 from the register, for non-payment of renewal fee, was advertised. 291623 is the registration number whereby the trademark CASTLE was registered in the name of defendant No.1. There is no evidence of the Registrar of Trade Marks having actually renewed the registration of the aforesaid trade marks at any point of time after their removal from the register of trademarks was advertised in Trade Mark Journal. Defendant No.1 has not come forward to contest the suit. More importantly, there is no evidence that registration of the trademarks CASTLE and OLD CASTLE in the name of defendant No.1 subsisted on the date of filing of this suit and thereafter. Therefore, it must necessarily be held that defendant No.1 is no more the registered proprietor of the trademarks CASTLE and OLD CASTLE the registrations of the aforesaid marks in its favour having already been removed from the register of trade marks on account of non payment of the requisite fee.

Since it is the plaintiff company which first used the trademark CASTLE in India and the registrations in favour of defendant No.1 have already been cancelled, defendant No.1 Company has no right to use this mark and thereby pass off its goods as that of the plaintiff. As regards the trade mark OLD CASTLE, since this mark includes the whole of the trademark of the plaintiff company, the customer coming across beer being sold under the trade mark OLD CASTLE may buy this product assuming, on account of use of the word CASTLE, it to be a product of the plaintiff company. He may, on seeing a bottle/

Can of beer bearing the trade mark OLD CASTLE genuinely believe that either this product has been manufactured by the plaintiff company or it is being manufactured under licence or in collaboration with it, and that is why the word CASTLE has been used as a part of the trademark under which the product is being sold. Injunction can be sought not only in a case of actual use but also in a case of threatened use of a trademark. The owner of a trademark is well within his right in coming to the Court, for grant of an injunction, the moment he has a genuine apprehension that the defendant is likely to infringe his mark or to pass off his goods as those of the plaintiff. He need not necessarily wait till actual invasion of his rights and the law entitles him to take remedial action, well in time, whenever there is a reasonable threat of his right being invaded. In the case before this Court, the plaintiff did have a valid cause of action to seek injunction since the defendants themselves gave a cease and desist notice to the plaintiff, with respect to use of the mark CASTLE.

For the reasons given in the preceding paragraphs, a decree for permanent injunction is passed restraining defendant No.1 from selling, distributing or marketing beer under the trademark CASTLE and/or OLD CASTLE. However, considering the fact that this is plaintiffs own case that no beer has ever been sold by defendant No.1 under the trade name CASTLE/OLD CASTLE, I do not deem it appropriate to award any damages to the plaintiffs.

Infosys Technologies Ltd v. Jupiter Infosys Ltd & Anr. [SC] Civil Appeal Nos. 5743-5745 of 2005 Aftab Alam & R.M. Lodha, JJ.[Decided on 09.11.2010]

Brief facts:

In January 2001, the Appellant filed a suit before the Madras High Court for permanent injunction restraining the first respondent from offering shares to the public as claimed in the Initial Public Offer (IPO) using the name “Infosys”. The Single Judge of the Madras High Court passed an interim restraint order. The first respondent then filed three separate applications before the Madras High Court, inter alia, under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958 (the 1958 Act) and prayed for the removal/rectification of the entry in the register of trade mark in respect of trade mark No. 475269 in Class 16 while in the other two applications being O.P. No. 765 of 2001 and O.P. No. 766 of 2001, the first respondent prayed for removal/rectification of trade mark No. 475267 in Class 9 and trade mark No. 484837 in Class 7 respectively.

The appellant opposed these applications on diverse grounds by filing counter affidavits. The Madras High Court framed the issues and transferred that suit to IPAB for deciding the issues. The IPAB proceeded with the matter in light of the issues that were already framed by the High Court and heard the parties. The IPAB in the impugned order while dealing with the plea of limitation raised by the appellant held that the first respondent was the appropriate aggrieved party in the matter in view of the fresh cause of action having arisen to the first respondent on filing of Civil Suit No. 71 of 2001 by the appellant before the Madras High Court. The IPAB in the impugned order held that the trade mark Nos. 475269, 475267 and 484837 have not been used by the appellant for more than a period of five years and one month and the appellant also failed to make out that it had been in manufacturing or trading of the goods for which it had taken Registration Nos. 475269, 475267 and 484837. Consequently, the IPAB allowed the applications made by the first respondent purportedly under Section 46(1)(b) of the 1958 Act and directed the Registrar to remove these registrations from the register. The Appellant challenged the above order before the Supreme Court under Special Leave Petition.

Decision: Appeal allowed. Case remanded to IPAB.

Reason:

Having regard to the order that we intend to make, we are not persuaded to accept the objection raised on behalf of the first respondent that present appeal preferred directly before this Court from the impugned order passed by the IPAB is not maintainable and must be dismissed as such. Pertinently, the notice was issued in the petitions for special leave to appeal to the respondents on November 1, 2004. In response to the said notice the first respondent filed counter affidavit before this Court on March 11, 2005 wherein no specific objection about invocation of jurisdiction of this Court directly has been taken. In the counter affidavit a very vague objection was raised. We are afraid, this is hardly an objection about maintainability. Apart from it, on
12, 2005 after hearing both parties, special leave was granted by this Court.

In the backdrop of these peculiar facts, in our view, it is not appropriate to relegate the appellant at this distance of time to challenge the impugned order passed by the IPAB in writ petition before the High Court. The objection about maintainability of the appeals is, accordingly, overruled. The moot question which has been debated before us is whether or not, the first respondent is an aggrieved person. That the first respondent filed composite applications under Sections 46 and 56 of the 1958 Act for rectification/removal of the trade mark “Infosys” registered in Classes 7, 9 and 16 is not in dispute.

The position that emerges from the provisions pf section 45 and 56 is this. Whether the application is under Section 46 or under Section 56 or a composite application under both Sections, it is a pre-requisite that the applicant must be a person aggrieved. Section 46(1) of the 1958 Act enables any person aggrieved to apply for removal of registered trade mark from the register on the ground of non use as stated in Clause (a) and/or Clause (b). To be an aggrieved person under Section 46, he must be one whose interest is affected in some possible way; it must not be a fanciful suggestion of grievance. A likelihood of some injury or damage to the applicant by such trade mark remaining on the register may meet the test of locus standi. In Kerly’s Law of Trade Marks and Trade Names (11th edition) at page 166, the legal position with regard to person aggrieved’ has been summarized thus: The persons who are aggrieved are all persons who are in some way or the other substantially interested in having the mark removed – where it is a question of removal – from the register; including all persons who would be substantially damaged if the mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. We accept the above statement of law.

Insofar as Section 56 is concerned, it provides for varying situations in which the person aggrieved may apply for rectification of the registered trade mark from the register. Although both Sections, namely, Sections 46 and 56 require person aggrieved’ to apply for removal of the registered trade mark from the register or rectification of a trade mark in the register, the expression person aggrieved’ for the purposes of these two Sections has different connotations. The interpretation of the expression person aggrieved’ occurring in Sections 46 and 56 has come up for consideration before this Court on more than one occasion.

In our opinion the phrase “person aggrieved” for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register. In terms of Section 46(1), not only that the applicant has to show that he is an aggrieved person as his interest is being affected but the IPAB must also be satisfied, before it directs the removal of registered trade mark, that the applicant is an aggrieved person before it invokes the power in directing the removal of the registered trade mark. This is so because the prerequisite for exercise of power under Section 46(1) is that the applicant is a person aggrieved.

The question then arises, whether it is sufficient for the applicant to show that he is a person aggrieved when he makes his application or he must continue to remain a person aggrieved until such time as the rectification/removal application is finally decided. In our view, the grievance of the applicant when he invokes Section 46(1) must not only be taken to have existed on the date of making application but must continue to exist when such application is decided. If during the pendency of such application, the applicant’s cause of complaint does not survive or his grievance does not subsist due to his own action or the applicant has waived his right or he has lost his interest for any other reason, there may not be any justification for rectification as the registered trade mark cannot be said to operate prejudicially to his interest.

In view of the above, these appeals are allowed in part and the impugned order dated September 9, 2004 is set aside. The applications being TRA Nos. 25 to 27 of 2003 (OP Nos. 764 to 766 of 2001) are restored to the file of Intellectual Property Appellate Board, Chennai for hearing and disposal afresh in accordance with law.

K. Narayanan & Anr. v. S. Murali [JT 2008 (9) SC 26] Tarun Chatterjee & Harjit Singh Bedi, JJ [Decided on 05.08.2008]

Brief Facts:

The appellants are engaged in the business of manufacturing and selling Banana Chips and had adopted the trade mark A-ONE with respect to the said Banana Chips in 1986. The appellants had applied for registration of the trade mark A-ONE before the Trade Mark Registry at Chennai on 6th of December,1999 with respect to the Trade Mark A-ONE which is still pending.

The respondent filed three trade mark applications on 24th of January, 2000 before the Trade Mark Registry at Chennai seeking registration as user of the mark A-ONE throughout India since 1995. Thereafter the appellants filed C.S.No 482 of 2001 on 22nd of May, 2001 on the file of the High Court of Madras, seeking an injunction to restrain the respondent from passing off his goods using the trade mark AONE.

On 6th of March, 2002, the learned Single Judge of the High Court dismissed the injunction application and also revoked the leave to sue, granted by it to the appellants. The appellants, being aggrieved by the aforesaid order, preferred appeals before the Division Bench of the High Court, which dismissed the appeal. Against the order of dismissal appellants approached the Supreme Court.

Decision : Appeal dismissed.

Reasons:

In the present case, mere filing of a trade mark application cannot be regarded as a cause of action for filing a suit for passing off since filing of an application for registration of trade mark does not indicate any deception on the part of the respondent to injure business or goodwill of the appellants. Filing of an application for registration of a trade mark does not constitute a part of cause of action in a suit for passing off. The appellants cannot file the suit in the High Court of Madras seeking an injunction to restrain the respondent from passing off his goods using the trade mark A-ONE, based only on the claims made in the trade mark application of respondent filed before the Trade Mark Registry. Before registration is granted for the trade mark, there is no right in the person to assert that the mark has been infringed and that a proposed registration which may , or may not be granted will not confer a cause of action to the plaintiff, whether the application for registration is filed by the plaintiff, or the defendant. For the above said reasons the appeal is dismissed.

Pfizer Products Inc v. Rajesh Chopra & Ors 127 (2006) DLT 783 Badar Durrez Ahmed, J.

Brief Facts:

The plaintiff company filed a suit against the respondents alleging infringement of its trademark. The plaintiff had alleged in the plaint that the respondents are about to sell the infringed goods in Delhi. On the other hand, the respondents had contended, by way of an application, that the Delhi Court had no territorial jurisdiction as they had not sold the alleged infringed goods in Delhi.

Decision: Application dismissed.

Reasons:

The other aspect of the matter is that a threat of selling the offending goods in Delhi would in itself confer jurisdiction in the Courts in Delhi to entertain a suit claiming an injunction in respect thereof. Whether thethreat perception is justified or not is another matter which has to be considered and decided upon in the application filed by the plaintiff under Order 39 Rules 1 and 2 or on merits when the suit is taken up for disposal. Insofar as Order 7 Rule 10 is concerned, assuming that whatever is stated in the plaint is correct, one would have to also assume that the threat or the intention of the defendants to sell and offer for sale the offending goods in Delhi is also correct. Therefore, if the threat exists then this Court would certainly have jurisdiction to entertain the present suit.