2008 (8) TMI 977 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of the plaintiff's trademarks "Ayur" and "Ayu" by the defendant.
2. Passing off by the defendant using marks similar to "Ayur" and "Ayu".
3. Defendant's application for registration of similar marks.
4. Plaintiff's claim of exclusivity over the word marks "Ayur" and "Ayu".
5. Defendant's opposition to the plaintiff's interlocutory petition and vacating application.
6. Consideration of international trademark registrations under the Paris Convention.
7. Application of the Trade Marks Act, 1999 and relevant sections.
8. Analysis of previous judgments and their applicability.

Detailed Analysis:

1. Infringement of Trademarks:
The plaintiff asserted its exclusive right over the word marks "Ayur" and "Ayu" based on its label registrations and sought to stop the defendant's use of marks like "Ayucare", "Ayurcare", "Himani Ayurdhara", and "Himani Ayucare". The court found that the plaintiff's claim of infringement based on its "Ayur" mark as part of its device registrations was unacceptable at the interlocutory stage. The word "Ayur" was deemed not capable of distinguishing the goods or services of a person from those of another, as it seemed to designate the nature of the goods.

2. Passing Off:
The plaintiff argued that the defendant's use of similar marks would cause damage to its credibility and reputation. The court noted that the tort of passing off is based on the misrepresentation leading the public to believe that the defendant's goods are those of the plaintiff. The court found that the plaintiff did not establish a strong case of passing off for the marks "Ayurcare" and "Himani Ayurdhara". However, the plaintiff was entitled to an injunction against the defendant's use of the mark "Ayucare" on the strength of its registered word mark "Ayu".

3. Defendant's Application for Registration:
The defendant applied for registration of the marks "Ayurcare" and "Ayucare" in various classes. The plaintiff opposed these applications based on its registered device and word marks. The court found that the defendant's use of "Ayucare" without any distinguishing feature was likely to cause confusion and associate the product with the plaintiff's "Ayu" mark.

4. Plaintiff's Claim of Exclusivity:
The plaintiff claimed exclusivity over the word marks "Ayur" and "Ayu" based on its registrations and previous enforcement actions. The court found that the word "Ayur" was not distinctive enough to warrant exclusivity and that the plaintiff's claim of infringement based on this word was not strong enough at this stage.

5. Defendant's Opposition and Vacating Application:
The defendant opposed the plaintiff's interlocutory petition and filed a vacating application to recall the ex parte ad interim order. The court modified the initial order to restrict the injunction within India and allowed the defendant's overseas business to continue unaffected.

6. International Trademark Registrations:
The plaintiff referenced its registrations in convention countries under the Paris Convention to claim exclusivity in India. The court noted that the Paris Convention principle of equal treatment does not imply that a common Indian word registered in another country would automatically be protected in India.

7. Application of Trade Marks Act, 1999:
The court considered Sections 17, 28, and 29 of the Trade Marks Act, 1999. It was found that an infringement action may not be based on an unregistered part of a registered whole trademark. The word "Ayur" was not found registrable under the Act for protection, and the plaintiff's claim of infringement based on this word was rejected.

8. Analysis of Previous Judgments:
The court analyzed previous judgments, including those from the Delhi High Court and other courts, to determine the distinctiveness and secondary meaning of the marks. It was found that the plaintiff's mark "Ayur" did not have a strong enough secondary meaning to warrant exclusivity. The court also noted that previous decisions involving different defendants did not necessarily bind the present case.

Conclusion:
The court granted an injunction restraining the defendant from using the mark "Ayucare" without the distinguishing feature "Himani". The rest of the plaintiff's claims were to await trial. The court vacated the remainder of the subsisting interim order and disposed of the applications without any order as to costs. The plaintiff's request for a stay of the order was refused.