2012 (7) TMI 1055 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of Trademark
2. Passing Off
3. Delay

Infringement of Trademark:
The plaintiff filed an application u/s Order XXXIX, Rules 1 & 2 read with Section 151 CPC to restrain the defendants from using the mark RED HAT and the SHADOWMAN device, which are deceptively similar to the plaintiff's registered trademarks. The plaintiff has been using the trade mark RED HAT since 1994 and the SHADOWMAN logo since 1996, with registrations in India and other countries. The defendants incorporated a company named Red Hat Infotechnologies Pvt. Ltd. in 2003 and have been using the mark RED HAT and a similar device. The court noted that u/s 29(4) and 29(5) of the Trade Marks Act, 1999, the plaintiff's registered trade marks are protected, and the use of the mark RED HAT by the defendants as part of their corporate name constitutes infringement. The court found that the plaintiff has established a prima facie case of infringement.

Passing Off:
The plaintiff argued that the defendants' use of the mark RED HAT and the SHADOWMAN device constitutes passing off, as it causes confusion and misleads the public into believing that the defendants' services are associated with the plaintiff. The court referred to the essential characteristics of passing off, including misrepresentation, likelihood of deception, and injury to the plaintiff's goodwill. The court found that the plaintiff has established a prima facie case of passing off, as the defendants' use of the mark and device is likely to deceive and cause confusion.

Delay:
The defendants argued that there was a delay in bringing the action, which should bar the plaintiff from obtaining an injunction. The court noted that no clear evidence of the plaintiff's awareness of the defendants' use of the mark was provided. The court held that mere delay is not sufficient to defeat the grant of an injunction in cases of infringement or passing off, especially when the adoption of the mark by the defendants was dishonest. The court cited several judgments supporting this view and concluded that the plaintiff's action is not barred by delay.

Conclusion:
The court granted an interim injunction restraining the defendants from using the trade mark RED HAT and the SHADOWMAN device, or any mark deceptively similar to the plaintiff's trade marks, until the final disposal of the suit. The defendants were given time until 31st December 2012 to change their corporate name by deleting the mark RED HAT. The findings are tentative and will not affect the final decision after the trial.