2008 (7) TMI 1049 - HC - Indian Laws

Summary

Issues Involved:
1. Ex-parte injunction order.
2. Maintainability of the appeal.
3. Prior use and registration of the trademark.
4. Concealment and misrepresentation by the Respondent.
5. Acquiescence and delay.
6. Distinctiveness and likelihood of confusion.
7. Balance of convenience and irreparable injury.
8. Common use of the suffix "MOLA".
9. Private settlements and third-party use.
10. Delay, laches, and acquiescence.
11. Back to back advertisement.

Summary:

1. Ex-parte Injunction Order:
The appeal was filed against the ex-parte injunction order dated 20th December 2007, restraining the Appellant from using the mark RASMOLA, which was found deceptively similar to the Respondent's well-known mark HAJMOLA.

2. Maintainability of the Appeal:
The appeal was considered maintainable as the learned Single Judge had not disposed of the injunction application or the Appellant's application for vacation of injunction within thirty days. Both parties requested the Court to dispose of the appeal on merits.

3. Prior Use and Registration of the Trademark:
The Appellant contended that it had been using the mark RASMOLA since 1989 and had registered it in 1996. The Respondent argued that it was the prior user of the mark HAJMOLA since 1972, and its mark was well-known with significant sales and advertisement expenditure.

4. Concealment and Misrepresentation by the Respondent:
The Appellant alleged that the Respondent had concealed the filing of three earlier suits against similar marks and had compromised those suits, allowing the use of marks like SIDHMOLA, SATMOLA, and CHATMOLA.

5. Acquiescence and Delay:
The Appellant argued that the Respondent's suit was barred by acquiescence and delay, as the Respondent had knowledge of the Appellant's use of the mark RASMOLA for a long time. The Respondent countered that it had no knowledge of the Appellant's use and that delay or laches would not be a defense against an interim injunction.

6. Distinctiveness and Likelihood of Confusion:
The Respondent claimed that HAJMOLA was a coined and invented word, and its mark was distinctive. The Court found that the Appellant's and Respondent's marks were similar, their products identical, and sold through the same channels, leading to a likelihood of confusion and passing off.

7. Balance of Convenience and Irreparable Injury:
The Respondent argued that the balance of convenience was in its favor and that no injury would be caused to the Appellant if the injunction continued. The Court agreed, noting that the Appellant had other products under different marks.

8. Common Use of the Suffix "MOLA":
The Appellant's argument that the suffix MOLA was common to the trade was not substantiated with significant evidence. The Court held that the Respondent was not expected to sue all small infringers and that the use of similar marks by others could not be a defense to passing off.

9. Private Settlements and Third-Party Use:
The Court found that private settlements by the Respondent did not offer a license to the world to infringe its mark HAJMOLA. Use of similar marks by third parties was not a defense to the Appellant's illegal act of passing off.

10. Delay, Laches, and Acquiescence:
The Court did not find the Respondent's suit barred by delay, laches, or acquiescence. The Appellant's sales under the mark RASMOLA were insignificant until 2004, and the Respondent had not found the Appellant's goods in the market until December 2007.

11. Back to Back Advertisement:
The Court held that the Respondent's extensive advertisement activities made it difficult to presume awareness of the Appellant's product from a few isolated incidents. The publication of advertisements in the same magazine was not sufficient to infer the Respondent's knowledge of the Appellant's use of a similar mark.

Conclusion:
The appeal was dismissed as devoid of merits, with the Court requesting the learned Single Judge to expeditiously dispose of the suit within six months. The observations made were on a prima facie view and would not prejudice either party at the trial.