2013 (4) TMI 6 - HC - Companies Law

Infringement of trademark - Permanent injunction seeked against infringement and passing off - plaintiff has also prayed for damages and delivery up of all infringing articles qua the plaintiff s trademark FREEMANS adopted for measuring tapes and part components thereof - whether the defendant s trademark is deceptively similar to that of the plaintiff s and whether the act of the defendants constitute infringement and passing off? - Held that - Applying the test laid down in Amritdhara Pharmacy v. Satya Deo Gupta 1962 (4) TMI 65 - SUPREME COURT to the facts of the present suit, it is found that the defendant s trademark FREEDOM is deceptively similar to that of the plaintiff s trademark FREEMANS. Both the competing trademarks represent the same class of goods i.e. measuring tapes. Both the trademarks also have an inherently distinct connotation i.e., the trademark has no relation with the product being sold. In addition, it should be kept in mind that while deciding cases such as the present suit, the Court should view the two trademarks from the eyes of a person with imperfect recollection. Further, the fact that the plaintiff s trademark has been in the market for over five decades and is now known globally is evidence to the fact that the plaintiff has built up a reputation in the market and its products have acquired enormous goodwill. To take advantage of this, the defendants seem to have the intention of passing off their product as that of the plaintiff by adopting a name which is similar to the plaintiff s trademark. Also the defendant no.1 was the earlier distributor of the plaintiff s products shows that adoption of the said trademark was not merely a coincidence and that he had the intention of passing off his products as that of the plaintiff s. Thus a permanent injunction restraining the defendants from launching, using, advertising the trademark FREEDOM with respect to measuring tapes/ components thereof passed. No reason to decree the suit with regard to delivery up as the defendants have not yet launched their product in the market due to a temporary injunction operating against them, thus the plaintiff has not suffered any loss the prayer for damages also stand dismissed. The suit stands disposed. Decree be drawn accordingly.

Summary

Issues:
- Suit seeking permanent injunction against trademark infringement and passing off.

Analysis:
1. The plaintiff, a company manufacturing measuring tapes, sought to protect its trademark "FREEMANS" against infringement and passing off. The trademark was registered in 1963 and 1985 for measuring tapes and allied goods. The plaintiff alleged that the defendants intended to use the trademark "FREEDOM" for measuring tapes, causing confusion with the plaintiff's trademark.

2. The plaintiff argued that the defendants' trademark was deceptively similar to theirs and constituted infringement and passing off. The defendants denied the similarity, claiming visual and phonetic differences between the trademarks. An interim injunction was granted in favor of the plaintiff, restraining the defendants from using the trademark "FREEDOM."

3. Evidence was led by the plaintiff, including the deposition of the Joint Managing Director. The defendants were subsequently proceeded ex parte. The main issue was whether the defendants' trademark was deceptively similar to the plaintiff's and whether their actions constituted infringement and passing off.

4. The plaintiff's counsel contended that both trademarks were inherently distinct, used for the same class of goods, and phonetically similar. Legal precedents were cited where similar trademarks were held to be deceptively similar by the courts.

5. The judgment applied the test of deceptive similarity from legal precedents to determine that the defendants' trademark "FREEDOM" was deceptively similar to the plaintiff's "FREEMANS." Considering the plaintiff's reputation built over five decades and global recognition, the court found the defendants' actions intentional to pass off their products as the plaintiff's.

6. The court decreed the suit partially, granting a permanent injunction against the defendants from using the trademark "FREEDOM" for measuring tapes. The injunction was based on the deceptive similarity between the trademarks and the defendants' intention to benefit from the plaintiff's goodwill. The suit was dismissed for damages due to lack of loss suffered by the plaintiff.

7. The judgment highlighted the importance of protecting trademarks and preventing passing off in the market. The court's decision aimed to safeguard the plaintiff's brand reputation and prevent consumer confusion caused by deceptive similarities in trademarks.