2011 (2) TMI 1531 - HC - Companies Law

Summary

Issues Involved:
1. Infringement of Trademark
2. Passing Off
3. Entitlement to Injunction
4. Delivery Up of Infringing Material
5. Rendition of Accounts
6. Punitive Damages

Summary:

1. Infringement of Trademark:
The Plaintiff, a partnership firm, claimed to have adopted the trademark/trade name/label GIANI'S in 1960 and registered it for various edible items. The Defendants were alleged to have adopted a deceptively similar trademark GIAN'S, infringing the Plaintiff's registered trademark. The court noted that u/s 28 of the Trade Marks Act, 1999, the registered proprietor has the exclusive right to use the trademark and obtain relief for infringement. The court found that the Defendant's mark was visually, phonetically, and structurally similar to the Plaintiff's mark, thus constituting infringement.

2. Passing Off:
The Plaintiff also based its case on passing off, alleging that the Defendants' use of the trademark GIAN'S caused confusion among the public, leading them to believe that the Defendants' products were associated with the Plaintiff. The court reiterated that passing off occurs when the Defendant's mark is so similar to the Plaintiff's that it deceives or causes confusion among consumers. The court found that the Defendants' use of the mark GIAN'S was likely to deceive customers into believing they were purchasing the Plaintiff's products.

3. Entitlement to Injunction:
The court held that the Plaintiff was entitled to a permanent injunction restraining the Defendants from using the trademark GIAN'S. The court emphasized that the Plaintiff had established a long-standing use and reputation of the trademark GIANI'S, and the Defendants' use of a similar mark was likely to cause confusion and deception in the market.

4. Delivery Up of Infringing Material:
Although the Plaintiff sought delivery up of all packaging material, cartons, and goods bearing the infringing mark for destruction, this relief was not pressed during arguments.

5. Rendition of Accounts:
The Plaintiff also sought rendition of accounts or, alternatively, damages amounting to Rs. 20,01,000/-. However, this relief was not pressed during arguments.

6. Punitive Damages:
The court awarded punitive damages of Rs. 20,000/- to the Plaintiff, noting that punitive damages are founded on the philosophy of corrective justice. The court emphasized the need to signal to wrongdoers that the law takes breaches seriously and to compensate for the energy and resources spent by the Plaintiff in litigating against trademark infringement.

Conclusion:
The court restrained the Defendants from using the trademark GIAN'S or any similar mark for their products and awarded punitive damages to the Plaintiff. The name of Defendant No. 2 was deleted from the array of Defendants.