2010 (4) TMI 1175 - HC - Companies Law

Summary

Issues Involved:
1. Interim Injunction
2. Ownership and Prior Use of Trademark
3. Territorial Jurisdiction
4. Delay, Laches, and Acquiescence
5. Character Merchandising

Summary:

1. Interim Injunction:
The plaintiff filed an application u/s Order XXXIX Rules 1 & 2 read with section 151 of CPC & section 135 of the Trade Marks Act, 1999, seeking an interim injunction to restrain the defendants from using the trademark NODDY or any deceptively similar mark. The plaintiff claims ownership of the worldwide trademark rights in NODDY, including the name and character image, and has expanded its use through various merchandise in India.

2. Ownership and Prior Use of Trademark:
The plaintiff asserts that the trademark NODDY is well-known and has achieved distinctiveness. The defendants, however, claim to have adopted the term NODDY as their trademark in 1991 and argue that their activities are distinct from those of the plaintiff. The plaintiff's prior history with M/s. Noddy Apparels and the opposition to the trademark registration application in 2000 were highlighted. The plaintiff failed to establish user of the mark prior to 1995, while the defendant established prior user and registration of the mark from 1995.

3. Territorial Jurisdiction:
The defendants questioned the territorial jurisdiction of the Court, stating that the suit for infringement and passing off can lie where the defendant is based. The first three defendants are in Mumbai, and the fourth defendant is a dealer for the first defendant. The plaintiff has not filed any proof of sale of the impugned goods by the fourth defendant.

4. Delay, Laches, and Acquiescence:
The defendants argued that the suit suffers from delay, laches, and acquiescence, as there is an admitted delay of 9 years since the plaintiff became aware of the defendant's existence in 2000. The defendant claims to have created a niche in the market and cites another example of a registered proprietor of the trademark NODDY since 1989.

5. Character Merchandising:
The case involves character merchandising, where the plaintiff's fictional character NODDY is used as a trademark. The plaintiff failed to establish prior user in India before 1995. The Court noted that the plaintiff did not follow up on its opposition to the defendant's trademark application and failed to provide evidence of sales, importation, or advertisements of NODDY books in India prior to 1995.

Conclusion:
The Court dismissed the plaintiff's application for an interim injunction due to a lack of evidence establishing prior use of the trademark in India before 1995. The Court emphasized that both parties hold trademark registrations, and their rights should be determined based on principles applicable for passing off, with the most important component being the establishment of prior use of the mark. The case was listed for further proceedings on 01.09.2010.