2011 (6) TMI 937 - HC - Companies Law

Summary

Issues Involved:
1. Permanent injunction restraining the violation and infringement of trade mark/logo/label "AQUAFINA."
2. Damages/rendition of accounts.
3. Interim applications for temporary relief.
4. Territorial jurisdiction.
5. Continuous use of the trade mark "AQUAFINE" by the Defendants.
6. Visual and phonetic similarity between trade marks "AQUAFINA" and "AQUAFINE."
7. Similarity in packaging.
8. Registration of trade mark "AQUAFINE" by the Defendants.

Issue-wise Detailed Analysis:

1. Permanent Injunction Restraining the Violation and Infringement of Trade Mark/Logo/Label "AQUAFINA":
The Plaintiffs sought a permanent injunction against the Defendants to restrain them from using the trade mark "AQUAFINE," which is deceptively similar to the Plaintiffs' registered trade mark "AQUAFINA." The court found that the Plaintiffs had established a prima facie case of infringement, as the Defendants' use of the mark "AQUAFINE" was likely to cause confusion among consumers.

2. Damages/Rendition of Accounts:
The Plaintiffs also sought damages and rendition of accounts for the unauthorized use of their trade mark. The court did not delve deeply into this issue at this stage but noted that the Plaintiffs had a legitimate claim for damages due to the Defendants' infringement.

3. Interim Applications for Temporary Relief:
The Plaintiffs filed two interim applications for temporary relief. The court granted an interim order on 30.11.2009, restraining the Defendants from manufacturing packaged drinking water under the trade mark "AQUAFINE" or any other mark deceptively similar to "AQUAFINA." Additionally, a Local Commissioner was appointed to seize infringing products and materials from the Defendants' premises.

4. Territorial Jurisdiction:
The Defendants contested the court's territorial jurisdiction, arguing that their business was confined to Goa and adjoining districts of Karnataka. However, the court held that it had jurisdiction under Section 134 of the Trade Marks Act, 1999, as the Plaintiffs conducted substantial business in Delhi, and the Defendants' trade mark application was accessible in Delhi.

5. Continuous Use of the Trade Mark "AQUAFINE" by the Defendants:
The Defendants claimed continuous use of the mark "AQUAFINE" since 1992. However, the court found that the Defendants failed to provide sufficient evidence to substantiate their claim. The court noted the absence of documents proving continuous use and assignment of the trade mark from the predecessor entity, Aquafine Industries.

6. Visual and Phonetic Similarity Between Trade Marks "AQUAFINA" and "AQUAFINE":
The court rejected the Defendants' contention that "AQUAFINA" and "AQUAFINE" were visually and phonetically different. The court found that the two marks were almost identical and cited several precedents where similar marks were held to be deceptively similar.

7. Similarity in Packaging:
The court also addressed the issue of similarity in packaging, noting that the Defendants' packaging was almost identical to that of the Plaintiffs. The Local Commissioner's report confirmed this similarity. The court cited various cases to support its finding that the Defendants' packaging was a slavish copy of the Plaintiffs' packaging.

8. Registration of Trade Mark "AQUAFINE" by the Defendants:
The Defendants argued that their trade mark "AQUAFINE" was registered, giving them the right to use it. However, the court held that mere registration was not sufficient to prove the use of the trade mark. The court emphasized that the Plaintiffs were the prior users of the trade mark "AQUAFINA" and had established its goodwill and reputation. The court cited the case of AM?. Dongre and Ors. v. Whirlpool Corporation and Anr. to support its finding that registration does not bar an action for passing off by a prior user.

Conclusion:
In light of the above findings, the court confirmed the ex parte ad interim injunction granted on 30.11.2009, restraining the Defendants from using the trade mark "AQUAFINE." The court disposed of the interim applications and scheduled the matter for further proceedings.