2013 (4) TMI 506 - HC - Companies Law

Use of the trademarks KIDO and KIDCO by the defendants is in an identical fashion and used for the same class of goods - Whether the plaintiffs are the registered proprietors and owners of the trademarks KIDO and KIDCO -Held that - It is seen that the originals of two trademark certificates have been placed on record - Both the above mentioned certificates are for the registration of the trademark KIDO. Thus, it is amply clear that the plaintiff is the registered proprietor and owner of the trademark KIDO. Whether, the defendants‟ claim of having registered the trademark KIDCO in Pakistan results in a trans-border reputation - Held that - the defendants have contended this submission in their written statement, they have not proved the same. For want of proof, this issue stands decided against the defendants. Whether the acts of the defendants constitute infringement and passing off - Held that - Owing to the fact that the class of goods is confectionery, the majority of customers would be children. There can be no doubt that there would be confusion in their minds especially when both trademarks look exactly similar. Further the plaintiffs have been able to prove that they have attained good reputation in the market. Thus, with regard to the trademark KIDCO, I find that the defendants‟ acts constitute passing off - This provision makes it very clear that infringement of trademark can only be attributed to those marks which are registered. But this does not preclude a person from protecting his unregistered trademark under the act of passing off. Thus, since the mark KIDCO has not been registered as yet, I do not find the defendants‟ acts to be one of infringement. Order of permanent injunction passed, restraining the defendants from importing their products under the trademark KIDCO and from selling and manufacturing their products under the same mark within the territory of India.

Summary

Issues:
1. Ownership of trademarks "KIDO" and "KIDCO"
2. Infringement and passing off by defendants
3. Trans-border reputation of defendants' trademark
4. Entitlement to damages and rendition of accounts

Ownership of trademarks "KIDO" and "KIDCO":
The plaintiffs, a registered partnership firm, established ownership of the trademarks "KIDO" and "KIDCO" for various products since 1999. The mark "KIDO" is registered under class 30. The plaintiffs demonstrated extensive use, reputation building through promotions, and registration under the Trademarks Act 1999. The defendants contested, claiming prior use and registration in Pakistan. However, the court confirmed the plaintiffs' ownership based on registration certificates and evidence of goodwill.

Infringement and Passing off by Defendants:
The court analyzed whether the defendants' use of the mark "KIDCO" constituted infringement and passing off. The defendants imported products bearing the mark "KIDCO," similar to the plaintiffs' trademark, for confectionery items. Despite the defendants' claim of prior use, they failed to prove trans-border reputation. While the plaintiffs' mark "KIDO" was not deceptively similar to the defendants' mark, the court found the defendants' use of "KIDCO" amounted to passing off due to the identical nature and potential confusion, especially among young consumers.

Trans-border Reputation of Defendants' Trademark:
The defendants' assertion of trans-border reputation for the trademark "KIDCO," used since 1993, was not substantiated with evidence. As a result, the court ruled against the defendants on this issue, emphasizing the lack of proof despite their claim.

Entitlement to Damages and Rendition of Accounts:
Regarding damages and rendition of accounts, the court granted a partial decree in favor of the plaintiffs. An order of permanent injunction was issued against the defendants from importing, selling, or manufacturing products under the trademark "KIDCO" in India. The court noted the absence of evidence of post-injunction activities by the defendants under the infringing mark. Consequently, the claim for damages was dismissed, and rendition of accounts was limited to the period before the injunction order.

In conclusion, the court decreed the suit partially, granting relief through a permanent injunction and rendition of accounts, while dismissing the claim for damages due to the lack of post-injunction activities by the defendants.