1988 (10) TMI 278 - HC - Companies Law

Summary

Issues Involved:
1. Trademark Infringement
2. Deceptive Similarity
3. Passing Off
4. Delay, Laches, and Acquiescence
5. Balance of Convenience
6. Groundless Threats

Issue-wise Detailed Analysis:

1. Trademark Infringement:
The plaintiff, a prominent manufacturer of Synthetic Resin Adhesives under the trademark 'Fevicol,' claims that the defendant's use of the trademark 'Trevicol' constitutes trademark infringement. The plaintiff's trademark 'Fevicol' is registered and has been in continuous use since 1960. The plaintiff alleges that the defendant's use of 'Trevicol' is visually and phonetically similar to 'Fevicol,' causing confusion among consumers.

2. Deceptive Similarity:
The court examined whether the trademarks 'Fevicol' and 'Trevicol' are deceptively similar. The suffix 'Vicol' is common to both marks, and despite the different prefixes ('Fe' and 'Tre'), the overall sound and visual impression of the marks are similar. The court noted that the marks should be compared as a whole and not in parts. The similarity is likely to deceive or confuse an average customer, especially illiterate purchasers.

3. Passing Off:
The plaintiff argued that the defendant's use of similar containers and get-up for their products constitutes passing off. The court compared the containers and found that both the plaintiff's and defendant's containers have a similar layout, color scheme, and design elements, which are likely to mislead consumers. The court concluded that the defendant's containers are almost identical to the plaintiff's, leading to a likelihood of deception.

4. Delay, Laches, and Acquiescence:
The defendant contended that the plaintiff's delay in filing the suit should bar the grant of a temporary injunction. The plaintiff learned about the defendant's infringing activities in 1986 and filed a complaint under Section 78 of the Trade and Merchandise Marks Act. The present suit was filed in July 1987. The court held that the plaintiff acted within a reasonable time and did not acquiesce to the defendant's use of the trademark 'Trevicol.' The court rejected the argument of delay and acquiescence.

5. Balance of Convenience:
The court considered the balance of convenience and concluded that it favors the plaintiff. The plaintiff has been using the trademark 'Fevicol' since 1960, with extensive sales and advertising expenses. In contrast, the defendant's use of 'Trevicol' began in 1985. Allowing the defendant to continue using the infringing trademark would likely deceive the public and cause irreparable harm to the plaintiff. The court emphasized that the defendant could develop and popularize a different trademark.

6. Groundless Threats:
The defendant filed an application seeking to restrain the plaintiff from issuing threats of legal action. The court dismissed this application, stating that the plaintiff has the right to pursue legal proceedings to protect its trademark. The defendant's claim of groundless threats was deemed misconceived, as the plaintiff acted within its legal rights.

Conclusion:
The court granted the plaintiff's application for a temporary injunction, restraining the defendant from using the trademark 'Trevicol' and the impugned containers until the final decision of the suit. The defendant's applications regarding groundless threats were dismissed. The court awarded costs to the plaintiff, emphasizing the need to protect both the plaintiff's interests and the public from deception.