At the outset, this (uncomplicated) case law (Aditya Birla Nuvo Limited vs R.S. Sales Corporation & Anr on 28 July 2016) doesn’t set out or provide clarification on any point of law. Further, this is not a final Order. It makes the previously issued interim order absolute during the pendency of the suit. Even then, this judgment, to my mind, gives insights pertaining to discerning and devising strategies, presents an indicative list as to what to do and what not to do etc. As it is worth taking a quick look at this judgment, I presented the major arguments and the corresponding determinations in tabular form. [Note that the Plaintiff filed the instant suit for seeking a decree of permanent injunction for restraining the infringement of its registered trademark.]
Background:
The Plaintiff filed IA No.9965/2013 under Order XXXIX Rule 1 & 2 CPC and Defendant Nos. 1 and 2 filed IA Nos.15177/2013 and 15175/2013 – both under Order XXXIX Rule 4 of the CPC – respectively for vacation of interim order dated 17.06.2013 by virtue of which an ex parte ad-interim injunction order was granted for restraining the Defendants from selling / marketing their products using the mark ‘PETER ENGLAND’. All three applications were taken up and heard together.
The Plaintiff claimed to be the subsequent proprietor of the trademark ‘PETER ENGLAND’ (Reg. No. 665416, Class 25) in respect of ‘clothing, footwear and headgear’. Since 1997, the Plaintiff (by itself or through its predecessor) has been selling readymade apparels and accessories bearing the registered trademark ‘PETER ENGLAND’.
The Defendant No. 1 is engaged in the business of manufacturing and selling footwear. Defendant no. 2 is Defendant no. 1’s stockist. The Defendant No.1 filed an application bearing No.805051 for registration of the trademark ‘PETER ENGLAND’ with the suffix ‘VIP SHOES’ (Advertised in the Trade Mark Journal no. 1401 dated 01.10.2008). The said Defendants have been selling footwear inter alia under the trademark ‘PETER ENGLAND VIP SHOES’. The Plaintiff opposed the aforesaid application. In the light of plaint filed by the Plaintiff, the Court passed an ad-interim ex-parte order restraining the Defendants from selling / marketing their products using the mark ‘PETER ENGLAND’.
In this case, the aforesaid ad-interim ex-parte order was challenged by the Defendants. As to summarise the arguments and judgment (which went in favour of the Plaintiff):
| Defendant | Plaintiff | Judgment |
| Defence of prior user – claimed that it has been using the trademark ‘PETER ENGLAND VIP SHOES’ since the year 1998. | Trademark not registered yet – the Plaintiff opposed the registration
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Agreed with the Plaintiff- Registration not granted yet.
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| Turnover of footwear under the said brand during the year 1998-99 was INR 57,29,791/- which had risen to INR 1,49,56,350 in the year 2012-13. | Cited affidavits filed on behalf of Defendant No. 1 with the Registrar of Trade Marks wherein the same sales figures were claimed for each trademark namely ‘PETER ENGLAND VIP SHOES’, ‘LONDON VIP SHOES’,‘ENGLISH QUEEN’ and ‘ROYAL MAN’ | Did not accept the argument of Defendant – the sales turnover for each of the said brand cannot be identical – Further, Plaintiff’s turnover in respect of the goods sold under the trademark ‘PETER ENGLAND’ was INR 570 crores in the year 2012-13.
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| Plaintiff’s name has not been substituted as the registered proprietor of the mark. Plaintiff failed to show as to how it was connected with Indian Rayon & Industries Limited and thus, the Plaintiff was not entitled to the benefit of the trademark registered in the name of Indian Rayon & Industries Limited. | Registration of the trademark ‘PETER ENGLAND’ was applied for by Indian Rayon & Industries Limited on 12.05.1995
Produced a copy of the certificate of Registration of Trade Mark dated 28.12.2005 – registered in favour of Indian Rayon & Industries Limited.
Also cited the Certificate of Incorporation dated 27.10.2005, issued by the Registrar of Companies which evidences that the name of ‘Indian Rayon &Industries Limited’ was changed to ‘Aditya Birla Nuvo Limited’
Filed a copy of Form TM 33 dated 24.11.2006 which indicates that the Plaintiff had applied to the Trade Mark Registry for change in the name of the proprietor from Indian Rayon & Industries Limited to Aditya Birla Nuvo Limited.
Printout from the website of the Trade Mark Registry which indicates that the trade mark is now registered in the name of Aditya Birla Nuvo Limited |
Plaintiff is the registered proprietor of the trademark ‘PETER ENGLAND’
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| The artistic design of the logo used by the Plaintiff was different from the logo used by Defendant no. 1 and, therefore, no case was made out for violation of Sections 28/29 of the Trade Marks Act, 1999 | Challenged the contention | The Plaintiff’s trademark ‘PETER ENGLAND’ is similar to the Defendants’ trademark ‘PETER ENGLAND VIP SHOES’.
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Plaintiff is engaged only in the manufacture and sale of apparels and is not engaged in the manufacture and sale of shoes. Therefore, the Plaintiff has no case for infringement of the trademark and design. Since it was an admitted case that the Plaintiff was not engaged in the manufacture of shoes, the trademark registration granted in favour of the Plaintiff was liable to be cancelled by virtue of Section 47 of the Trade Marks Act, 1999 |
Relied upon the decision of the Supreme Court in M/s. Gujarat Bottling Company Limited & Ors V. Coca Cola Company & Ors: AIR 1995 SC 2372 – the proprietor of the registered trademark can also sue for infringement of the trademark in respect of the goods covering that mark irrespective of whether the said mark was used or not. | Agreed with Plaintiff |
It was, therefore, concluded that the trademark of the Plaintiff was infringed. The certificate of registration clearly indicated the registration vis-à-vis footwear. Further, the mark used by Defendant no 1 is similar to the Plaintiff’s registered trademark. The Defendants’ use of the trademark was, therefore, prima facie dishonest. The Plaintiff filed copies of advertisements published in two daily newspapers (in the year 1997) which established that it had been using the trademark much prior to the use claimed by Defendants.
The Plaintiff established all the three basic ingredients, namely a strong prima facie case; balance of convenience; and irreparable loss for grant of ad-interim injunction. Further, the Defendants failed to disclose any ground for vacating the interim order. The application of the Plaintiff under Order XXXIX Rule 1 & 2 of the CPC was allowed and the interim order dated 17.06.2013 was made absolute during the pendency of this suit. The applications of the Defendants were rejected.
Comments
The judgment highlighted the legal principle that the proprietor of the registered trademark can sue for infringement of the trademark in respect of the goods covering that mark irrespective of whether the said mark was used or not. As evident from the table, using facts and legal principles, the Plaintiff effectively countered the arguments of Defendants. The Plaintiff could heavily tilt the preponderance of probabilities in its favour. For instance, the Plaintiff successfully challenged the trustworthiness of turnover figures presented by the Defendant. As evident from this case law, success in cases like this one depends on creating reasonable doubts in the mind of a judge. And therefore, appreciation of the idiom, ‘Devil is in the detail’, is an absolute must.
This is actually a little odd. There are quite a few judgements that say a mark that is unused is not entitled to protection.
Would you mind giving citations? will be helpful..thanks.