2001 (8) TMI 1421 - HC - Indian Laws

Summary

Issues Involved:
1. Proprietorship and use of the trade mark "FLEXGRIP".
2. Alleged infringement and passing off of the trade mark "FLEXGRIP".
3. Trans-border reputation and goodwill.
4. Delay and acquiescence in filing the suit.
5. Descriptive nature of the trade mark "FLEXGRIP".
6. Balance of convenience and irreparable injury.

Issue-wise Detailed Analysis:

1. Proprietorship and Use of the Trade Mark "FLEXGRIP":
The plaintiffs, Gillette Company and Luxor Writing Instruments Limited, claimed exclusive proprietorship of the trade mark "FLEXGRIP" used for their writing instruments. The plaintiffs argued that the defendant, Sanghvi Writing Industries Limited, was using a similar mark "EKCO FLEXGRIP" for its products, which constituted an infringement of their trade mark rights.

2. Alleged Infringement and Passing Off of the Trade Mark "FLEXGRIP":
The plaintiffs sought a permanent injunction to restrain the defendants from using the trade mark "FLEXGRIP" on their products. They contended that the use of "EKCO FLEXGRIP" by the defendants would cause confusion among consumers, leading them to believe that the defendants' products were associated with the plaintiffs. However, the court noted that the plaintiffs' trade mark was not registered in India, making it a case of passing off rather than infringement. The court found that the complete trade marks "LUXOR PAPER MATE FLEXGRIP" and "EKCO FLEXGRIP" were sufficiently distinct to avoid confusion.

3. Trans-border Reputation and Goodwill:
The plaintiffs claimed that their trade mark "FLEXGRIP" had acquired trans-border reputation and goodwill. They cited various judgments to support their claim that international reputation should be protected even if the trade mark was not registered in India. However, the court found that the plaintiffs had not provided sufficient evidence to establish trans-border reputation in India. The court referred to previous cases where substantial evidence was required to prove such reputation.

4. Delay and Acquiescence in Filing the Suit:
The court observed that the plaintiffs had delayed filing the suit despite being aware of the defendants' use of the trade mark "FLEXGRIP" since 1997. The plaintiffs only filed the suit in 1999 after entering into a business arrangement with Luxor Writing Instruments. The court noted that such delay and acquiescence could disentitle the plaintiffs from obtaining an injunction.

5. Descriptive Nature of the Trade Mark "FLEXGRIP":
The court found that the trade mark "FLEXGRIP" was descriptive in nature, particularly in relation to writing instruments. The word "GRIP" was commonly used in the industry, and combining it with "FLEX" did not make it inherently distinctive. The court cited previous judgments where descriptive marks were not granted exclusive rights.

6. Balance of Convenience and Irreparable Injury:
The court weighed the balance of convenience and potential irreparable injury to both parties. It noted that the defendants had been using the trade mark "EKCO FLEXGRIP" since 1993 and had built a reputation under that mark. Granting an injunction would cause significant harm to the defendants' business. On the other hand, the plaintiffs' delay in filing the suit and the descriptive nature of the trade mark weakened their case for an injunction. The court concluded that the balance of convenience favored the defendants.

Conclusion:
The court dismissed the plaintiffs' application for an interim injunction and vacated the ex-parte injunction order dated December 16, 1999. The defendants were required to maintain separate accounts for the products sold under the trade mark "EKCO FLEXGRIP." The court emphasized that the views expressed were tentative and prima facie, and not a final determination on the merits of the case.