Showing posts with label 1999. Show all posts
Showing posts with label 1999. Show all posts
Sunday, June 13, 2010
Trade Marks Act, 1999
- Suit for permanent injunction restraining infringement of trademarks and passing off – HELD "facts and circumstances show that the plaintiffs have the ownership of the aforesaid trademarks and therefore no other person has any right to use marks which are phonetically and visually similar to the plaintiffs marks as also such marks being coined words. The defendants have attempted to counterfeit the products of the plaintiffs and pass off their goods as that of the plaintiffs. The defendants have no right to use the aforementioned trade mark/s of the plaintiffs and that too in respect of same goods. This has not only caused loss of profits to the plaintiffs, but also resulted in inferior products being made available to the public at large who have been deceived by the conduct of the defendants by making the public to believe that the marks the defendants used were the valid and the incontestable marks of the plaintiffs. It cannot be lost sight of the fact that the defendants mark is such that not only would an unwary purchaser be misled and deceived into buying the wrong product but it could in turn lead to disastrous consequences, the products being pharmaceutical products thus endangering human lives.
Trade and Merchandise Marks Act, 1958 - Trade Marks Act, 1999
Code of Civil Procedure, 1908 Rule 1 & 2
Appeals to challenge order dismissing application for ad-interim injunction restraining respondents from committing acts of infringement in respect of their trade mark "MILKA WONDER CAKE" by using trademark "MILKA" in respect of cakes - Held, As observed by the Apex Court in the judgment reported in 2002 (110) CC 518, 2002 AIR(SC) 275 ( Laxmikant V. Patel v. Chetanbhai Shah, ) . Refusal to grant injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff would not be capable of being undone at a later stage.
We do not wish to comment more about the validity of the appellant's trade mark in the present appeals as it would have a bearing on the same issue, which is stated to be pending before the Intellectual Board in the proceedings initiated by the respondents for rectification.
While considering the question of balance of convenience, the possible confusion that may cause in the mind of an ordinary person of average memory and imperfect recollection along with the possibility of difficulties and loss that may be caused to a party complaining infringement, has to be taken note of. In the case on hand, the product is cake and it will not be possible for an ordinary person to identify a particular product as both the products are found to be more or less identical. Therefore it would definitely cause confusion among the customers. The appellant has stated in so many words about the investment and the amount spent by him for sales promotion. Considering the prima facie evidence produced by the appellant and the balance of convenience, we are convinced that the appellant is entitled for an order of injunction pending disposal of the suit.
Appeals to challenge order dismissing application for ad-interim injunction restraining respondents from committing acts of infringement in respect of their trade mark "MILKA WONDER CAKE" by using trademark "MILKA" in respect of cakes - Held, As observed by the Apex Court in the judgment reported in 2002 (110) CC 518, 2002 AIR(SC) 275 ( Laxmikant V. Patel v. Chetanbhai Shah, ) . Refusal to grant injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff would not be capable of being undone at a later stage.
We do not wish to comment more about the validity of the appellant's trade mark in the present appeals as it would have a bearing on the same issue, which is stated to be pending before the Intellectual Board in the proceedings initiated by the respondents for rectification.
While considering the question of balance of convenience, the possible confusion that may cause in the mind of an ordinary person of average memory and imperfect recollection along with the possibility of difficulties and loss that may be caused to a party complaining infringement, has to be taken note of. In the case on hand, the product is cake and it will not be possible for an ordinary person to identify a particular product as both the products are found to be more or less identical. Therefore it would definitely cause confusion among the customers. The appellant has stated in so many words about the investment and the amount spent by him for sales promotion. Considering the prima facie evidence produced by the appellant and the balance of convenience, we are convinced that the appellant is entitled for an order of injunction pending disposal of the suit.
Trademarks Act, 1999
Appeal filed to challenge the order against dismissal of application for an ad interim injunction under O. 39, Rules. 1 and 2 of CPC - Application for ad interim injunction was filed for perpetual injunction restraining defendants from manufacturing or selling locks and hardware items under offending trademark "KEY MANN"
HELD
A reading of Section 28(3) WITH Section 30(1)(d) shows that the proprietor of a registered trademark cannot file an infringement action against a proprietor of an identical or a similar trademark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trademarks and bar action of infringement against each other. Section 27(2) ON THE OTHER HAND DEALS WITH THE PASSING OFF ACTION. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trademark under the Act would be irrelevant in an action for passing off. Registration of a trademark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark
We say so because in the absence of any statutory provision making a search essential, the practice of making a search or the breach thereof would be insufficient to support a finding that the party concerned has not come to the Court with clean hands. The learned Single Judge has also found that the plaintiff had not referred to the opposition of the defendants to the plaintiff's application for registration. That observation assumes that the opposition had been notified to the plaintiff. The material placed on record, however, does not support any such assumption. In the circumstances, the question mark put by the learned Single Judge on the bona fides of the plaintiff may remain angry area for future debate but may not be sufficient on the available material to support the vacation of the interim order.
HELD
A reading of Section 28(3) WITH Section 30(1)(d) shows that the proprietor of a registered trademark cannot file an infringement action against a proprietor of an identical or a similar trademark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trademarks and bar action of infringement against each other. Section 27(2) ON THE OTHER HAND DEALS WITH THE PASSING OFF ACTION. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trademark under the Act would be irrelevant in an action for passing off. Registration of a trademark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark
We say so because in the absence of any statutory provision making a search essential, the practice of making a search or the breach thereof would be insufficient to support a finding that the party concerned has not come to the Court with clean hands. The learned Single Judge has also found that the plaintiff had not referred to the opposition of the defendants to the plaintiff's application for registration. That observation assumes that the opposition had been notified to the plaintiff. The material placed on record, however, does not support any such assumption. In the circumstances, the question mark put by the learned Single Judge on the bona fides of the plaintiff may remain angry area for future debate but may not be sufficient on the available material to support the vacation of the interim order.
Trade Marks Act, 1999
Section 134
Civil Procedure Code, 1908 .
Order 7 Rule 11 -Return of plaint
Plaintiffs have been selling well known FORD Cars . Against this the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have appointed authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit
Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.
Civil Procedure Code, 1908 .
Order 7 Rule 11 -Return of plaint
Plaintiffs have been selling well known FORD Cars . Against this the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have appointed authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit
Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.
Trade Marks Act, 1999
Section 134
Civil Procedure Code, 1908 .
Order 7 Rule 11 -Return of plaint
Plaintiffs have been selling well known FORD Cars . Against thgis the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have apponted authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit
Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.
Civil Procedure Code, 1908 .
Order 7 Rule 11 -Return of plaint
Plaintiffs have been selling well known FORD Cars . Against thgis the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have apponted authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit
Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.
Friday, June 11, 2010
Trade Marks Act, 1999, Sections 134 & 135
Copyright Act, 1957, Sections 27(2) & 51
Plaintiff not residing or working for gain in Delhi — Territorial jurisdiction Invocation of jurisdiction of Court on the basis of vague allegations that the goods of defendants were being sold throughout the country including Delhi makes no sense
Plaintiff not residing or working for gain in Delhi — Territorial jurisdiction Invocation of jurisdiction of Court on the basis of vague allegations that the goods of defendants were being sold throughout the country including Delhi makes no sense
Trade Marks Act, 1999
Section 29(4)(5) —
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Therefore relief of Rs 2 lac as punitive damages and cost of the suit awarded
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Therefore relief of Rs 2 lac as punitive damages and cost of the suit awarded
Saturday, June 5, 2010
Trade Marks Act, 1999
Section 29(4)(5) —
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Sunday, May 30, 2010
Trade Marks Act, 1999
Section 92
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.
Trade Mark Act, 1999
Section 29 — the respondent/defendant has taken a stand that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice. [Para 25 & 33]
Trade Marks Act, 1999
Section 29 — Deceptively similar " For a deceptive similarity, the resemblance must be such as to be likely to . deceive or cause confusion. What degree of resemblance is necessary is, from the nature of things, a matter incapable of definition a priori. Each case must depend upon on its own facts and circumstances, in the considered opinion. The risk of deceptive and confusion ought not to be fancifully and it must be a real one the decree of similarity of the two marks in sight and sound, looking not just at the registered mark as a whole but also at its salient or essential features or the idea behind it, the whole range of potential customers for the goods protected by the registered mark, and not just customers for the goods of the particular type marked by the defendant, the nature and kind of customer likely to purchase the plaintiffs' and defendants' goods; the manner in which the purchasers of the goods are generally made."
Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.
Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.
Trade Marks Act, 1999
Section 27 — Passing off. "DABUR Dashmularishta" and "DABUR Ashokarishta" Sufficient evidence of the palintiff available to prove that the plaintiff is only the proprietor and prior user of the labels are of the palintiff. Labels of the defendant are simple imitations or substantial reproductions of the plaintiffs labels therefore the profits of the defendant are the losses suffered by the plaintiff HELD that the defendant must be directed to produce its account books. Compensatory damages awarded .The ploy of defendant is that it simply picked up the label in the advertisement of the plaintiffs product and used it as their label for 'Dashmularishta' in terms of Para 21 (i), (ii and (iii) of the plaint with costs along with damages to the tune of Rs. 1 lac as against the relief of Para 21 (iv) of the plaint. The decree be drawn accordingly.
Saturday, May 29, 2010
Trade Marks Act, 1999
Section 45
Trade & Merchandise Marks Act, 1958
Section 44
Validity of the assignment. Interpretation of Section 45
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent t on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an Assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.
Trade & Merchandise Marks Act, 1958
Section 44
Validity of the assignment. Interpretation of Section 45
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent t on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an Assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.
Trade Marks Act, 1999
Sections 27 & 29
Trade Mark "ketpod" of the plaintiff against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008.The defendants action smacks of this dishonesty.
Interim injunction made absolute.
Trade Mark "ketpod" of the plaintiff against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008.The defendants action smacks of this dishonesty.
Interim injunction made absolute.
Trade Marks Act, 1999
Section 2(1)(zb)
Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted
Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted
Trade Marks Act, 1999
Sections 9, 30 and 35
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Trade Marks Act, 1999
Section 12
Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.
HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .
This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.
Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.
HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .
This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.
Trade Marks Act, 1999
Sections 2 & 29
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]
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