2013 (8) TMI 352 - HC - Companies Law

Proprietor of Trademark Passing off of Goods - Whether the plaintiff was the proprietor of the trademark FENA, if so to what effect - Whether the user of trade mark/ trade name FINAby the defendant in relation to toiletries, cosmetic, detergents, cleaning and polishing preparations, lubricants or any other goods under the trade mark FINA was likely to cause confusion or deception amounting to passing off Held that - There can be no concern of confusion with regard to goods and services of the plaintiff outside of Class 3 - Decided in favour of the plaintiff only to the extent of Class 3 goods and services, and against the plaintiff with regards to goods and services outside Class 3. There were no factors of confusion existing between the businesses of the rival parties - Mahendra & Mahendra Paper Mills Ltd. v. Mahindra Mahindra Ltd. 2001 (11) TMI 978 - SUPREME COURT - The market, trade channels, course of trade and most importantly, the class customers of either parties were entirely different - it was the admitted position that the plaintiff was a household name regarding detergent powder and soaps under the name FENA They also hold valid trade mark with respect to Class 3 goods in India - Meanwhile, the defendant also holds worldwide - reputation in the petrochemical market and enjoys trans-border reputation in the relevant market , the defendants goods primarily belong to Class 4 of the Classification of Goods and Services under the Trade Mark Act. Territorial Jurisdiction - Whether this Court has jurisdiction to entertain and try the present suit - Held that - The issue was in favor of the plaintiff - The plaintiff had placed on record the invoice for purchase of the goods bearing the impugned trade mark - By virtue of the admission and in accordance with Sec. 58 of the Indian Evidence Act, 1872, the plaintiff was not required to prove any further - the sale of goods carrying the trade mark within the territorial limits of the Court s jurisdiction Damages - Permanent Injunction - Whether the plaintiff was entitled to rendition of accounts, profits and/or damages, if so, how much - Held that - The plaintiff was entitled to a permanent injunction restraining the defendants from using the impugned trade mark FINA with respect to goods and services under Class 3 - The plaintiff had been able to establish that it enjoyed strong goodwill and reputation with respect to soaps and detergents within India - the plaintiff had not been able to prove pecuniary loss thus it was not entitled to either damages or rendition of accounts Decided in favor of Petitioner.

Summary

Issues Involved:
1. Proprietorship of the trademark FENA.
2. Likelihood of confusion or deception due to the use of the trademark FINA.
3. Prior use and registration of the trademark FINA by the defendant.
4. Entitlement to rendition of accounts, profits, and/or damages.
5. Jurisdiction of the Court to entertain the suit.
6. Relief.

Detailed Analysis:

Issue No. 5: Jurisdiction of the Court
The plaintiff argued that the Court had jurisdiction as the defendants were conducting business within its territorial limits through defendant no. 3. The plaintiff presented an invoice from M/s Pal Motors & Industries (defendant no. 3) showing the sale of FINA products in Delhi. The defendants contended that a single invoice was insufficient to establish jurisdiction. However, the Court noted that the defendants admitted to retailing and selling goods in Delhi, which was not denied in their written statement. Based on this admission and Section 58 of the Indian Evidence Act, 1872, the Court found that it had jurisdiction to entertain the suit.

Issue No. 1: Proprietorship of the Trademark FENA
The plaintiff claimed to be the registered proprietor of the trademark FENA since 1976, supported by sales and advertisement figures (Ex-P3) and an affidavit by PW-1. The Registrar of Trade Marks had previously recognized the plaintiff as the proprietor of FENA in an order dated March 4, 1997, which opposed the defendant's application for registering FINA in Class 3 goods. The Court acknowledged the Registrar's decision and confirmed the plaintiff's proprietorship of the trademark FENA.

Issue No. 2: Likelihood of Confusion or Deception
The plaintiff argued that the use of FINA by the defendants for similar goods would cause confusion and deception among the public. The Registrar had earlier found the marks FENA and FINA to be deceptively similar, noting minor differences in vowels did not eliminate deceptive similarity. The Court, adhering to the principle of judicial comity, agreed with the Registrar's findings and held that the use of FINA for Class 3 goods would likely cause confusion and deception, thus amounting to passing off.

Issue No. 3: Prior Use and Registration by the Defendant
The defendants claimed prior use of the trademark FINA since 1920 and 1964, respectively, and asserted trans-border reputation. However, they failed to provide evidence supporting these claims. The Registrar had previously noted the defendants' inability to demonstrate prior use of FINA in India. The Court concluded that the defendants had not established prior use of the trademark FINA, deciding this issue against the defendants.

Issue No. 4: Entitlement to Rendition of Accounts, Profits, and/or Damages
The plaintiff did not provide evidence of pecuniary loss caused by the defendants' use of the trademark FINA. The defendants admitted they were not conducting business in detergents, soaps, or cosmetics under the FINA trademark in India. The Court found no basis for awarding damages or rendition of accounts due to the lack of evidence of financial harm to the plaintiff.

Relief:
The Court granted a permanent injunction restraining the defendants from using the trademark FINA for goods and services under Class 3, recognizing the plaintiff's strong goodwill and reputation in this category. However, it did not extend this restriction to lubricants or other goods and services outside Class 3, as there was no likelihood of confusion. The plaintiff was not awarded damages or rendition of accounts due to the absence of proven pecuniary loss.