2009 (5) TMI 983 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of registered trademarks.
2. Phonetic and visual similarity between trademarks.
3. Honest and concurrent use of the trademark.
4. Delay and acquiescence in seeking legal remedy.
5. Prima facie case for grant of injunction.

Detailed Analysis:

1. Infringement of Registered Trademarks:
The plaintiff sought a permanent injunction to restrain the defendants from infringing its registered trademarks, including the device of QILLA, and the words GOLDEN QILLA, LAL QILLA CHAPP, LAL QILLA, and NEEL QILLA, used in relation to rice. The plaintiff claimed that the defendants' use of HARA QILLA and the device of QILLA was intended to infringe its trademarks and cause confusion among consumers.

2. Phonetic and Visual Similarity Between Trademarks:
The learned Single Judge initially rejected the plaintiff's plea for an interim injunction, stating that there was no visual or phonetic similarity between the plaintiff's and defendants' marks. However, upon appeal, it was noted that the essential feature of the plaintiff's mark, the word 'QILLA,' was phonetically similar to the defendants' mark. The court emphasized that an unwary purchaser might not distinguish between the different prefixes (GOLDEN, LAL, NEELA, and HARA) and could be confused by the common word 'QILLA' and the similar device of a fort.

3. Honest and Concurrent Use of the Trademark:
The defendants claimed honest concurrent use of the mark HARA QILLA since 1978. However, the court found that the defendants failed to provide sufficient evidence, such as invoices or bills, to substantiate this claim. The court referenced the House of Lords' decision in Alex Pirie & Sons' Application, highlighting that mere knowledge of the plaintiff's mark and subsequent use does not constitute honest use if it leads to confusion.

4. Delay and Acquiescence in Seeking Legal Remedy:
The defendants argued that the plaintiff had delayed seeking legal remedy, which should defeat their claim for an injunction. The court rejected this argument, noting that the plaintiff had taken timely steps upon discovering the infringement, including sending a legal notice in 1986 and filing an opposition to the defendants' trademark application in 1989. The court referenced Hindustan Pencils Private Limited v. India Stationery Products Co., stating that delay alone does not bar the grant of an injunction if the plaintiff has a prima facie case.

5. Prima Facie Case for Grant of Injunction:
The court concluded that the plaintiff had established a prima facie case for infringement. The plaintiff's consistent use of the QILLA marks since 1962 and the likelihood of consumer confusion due to the defendants' similar mark warranted an interim injunction. The court emphasized that the plaintiff's reputation and goodwill were at risk due to the defendants' continued use of the infringing mark.

Conclusion:
The appeal was allowed, and the impugned order of the learned Single Judge was set aside. The defendants were restrained from using the HARA QILLA mark and device during the pendency of the suit. They were granted three months to dispose of existing stock using the infringing mark, subject to maintaining proper inventories and accounts. The trial court was requested to expedite the trial and dispose of the suit within one year.