2013 (9) TMI 349 - HC - Companies Law

Permanent Injunction - Infringement and Passing Off of Registered Trademark easyJet - Suit for permanent injunction restraining infringement of registered trademark, passing off, delivery up and damages has been filed by Plaintiffs - Held that - The defendants must be permanently restrained from using the plaintiff s trademark easyJet or any other deceptively similar mark - The plaintiffs had successfully established prior use of the suit trademark from the year 1995 - the reputation of the plaintiff had spilled over into India, as was evident from the coverage given to the plaintiff airline by Indian publications and the business generated by the plaintiffs from customers in India - This coupled with the fact that the defendants were using the plaintiff s coined trademark in respect of services that were covered under Class 39, for which the plaintiffs hold a valid and subsisting registration. The plaintiffs had established prior use of the trademark since 1995 - when it was first registered, and since 1998 when their services became accessible to Indians via their website - if the plaintiffs have customers in a country, it can be presumed that they enjoy a reputation in that country - Owing to the fact that Indians could access the plaintiff no 2 s services through its website as far back as in 1998 - the same was sufficient to constitute prior use - By virtue of Section 28 of the Act, a registered proprietor of the trademark had the exclusive right to the use of the trademark in relation to the goods and services in respect of which the trademark was registered and to obtain relief against infringement of the trademark. The plaintiff and the defendants were operating in the same sphere of activity - The services provided by the plaintiff and defendants were identical in nature - Therefore, the likelihood of confusion and deception was strong on account of the public at large associating the defendants services to be those offered by the plaintiff - The acts of the defendants in using the impugned trademark coupled with a lack of plausible explanation offered by the defendants for the same, leads to the conclusion that the defendants were in fact passing off their services as those of the plaintiffs in an attempt to cash in on the plaintiff s reputation worldwide as well as in India. The plaintiff had been vigilant about protecting and defending its intellectual property rights - The plaintiff s intellectual property rights had also been protected by international dispute resolution bodies such as WIPO - WIPO administrative panel decision wherein the respondent was ordered to transfer the domain name easyjets.com to the plaintiff in the present suit on the grounds that it was confusingly similar to the trademark in which the plaintiff had rights.

Summary

Issues Involved:
1. Infringement of registered trademark "easyJet"
2. Passing off
3. Delivery up and damages

Detailed Analysis:

Infringement of Registered Trademark "easyJet":

The plaintiffs, companies incorporated under the laws of England and Wales, filed a suit against the defendants, a company incorporated under the Companies Act, 1956, and its director, for the alleged infringement of their registered trademark "easyJet." The plaintiffs argued that they are the prior users of the trademark since 1995 and have registrations in multiple classes, including Class 39, in India since 2001. The defendants, trading under the name "EasyJet Aviation Services Limited," were accused of using the trademark in relation to identical services, which constitutes infringement under Section 29 of the Trademarks Act, 1999. The court found that the defendants' use of the trademark was identical and covered under Class 39, thereby constituting infringement under Section 29(5) of the Act.

Passing Off:

The plaintiffs contended that the defendants were passing off their services as those of the plaintiffs, causing confusion among the public and diluting the plaintiffs' goodwill. The court noted that the plaintiffs' trademark had gained significant goodwill and reputation worldwide, including in India, through extensive advertising and media coverage. The defendants' use of the trademark "EasyJet" was found to be a blatant copy, with no plausible explanation for its adoption, leading to the conclusion that the defendants intended to ride on the plaintiffs' goodwill. The court held that the defendants' actions amounted to passing off, causing confusion and deception among the public.

Delivery Up and Damages:

The plaintiffs sought damages for the defendants' infringement and passing off. The court observed that the plaintiffs had successfully established prior use of the trademark since 1995 and that their reputation had spilled over into India. The defendants' use of the trademark was found to be detrimental to the plaintiffs' distinctive character and reputation. The court awarded damages of Rs. 5 lacs to the plaintiffs, in addition to the costs of the suit, and permanently restrained the defendants from using the trademark "easyJet" or any deceptively similar mark.

Conclusion:

The court decreed the suit in favor of the plaintiffs, granting a permanent injunction restraining the defendants from using the trademark "easyJet," awarding damages of Rs. 5 lacs, and ordering the defendants to bear the costs of the suit. The judgment emphasized the plaintiffs' prior use and established reputation of the trademark, and the defendants' lack of a credible explanation for adopting the impugned trademark.