2014 (11) TMI 1219 - HC - Indian Laws

Restraint on defendant from using the trade mark LIPU or any other mark which is similar to it - case of plaintiff is that the sewing machines were imported by them from China, the mark on the machines or in any packaging material relating to them, would normally be the mark of the exporter or manufacturer - HELD THAT - Having regard to the fact that the invoices were raised by the Chinese manufacturers and that the manufacturing activity had taken place in China, it is very difficult to believe that the trade mark LIPU was coined by the plaintiffs and supplied by them to the manufacturers who affixed it on the goods. Particularly when the documents of the plaintiffs depict the plaintiffs to be ordinary retailers in the Central Kolkata District. The brand LIPU , if it is to belong to anyone belongs to the Chinese exporter and manufacturer and certainly not to the plaintiffs or the defendant Upto now the plaintiffs have been able to show nothing to establish that the mark has become so identified with them in this country that the people of this country identify it as belonging to them and not to the Chinese manufacturer - What emerges from this is that although both the parties claim to have used LIPU for a considerable period of time, the concern to get the mark registered has occurred very recently, in both. The plaintiffs' right to exclusive use of the mark 'LIPU' is not established at this stage. The parties can wait till the outcome of the trial, when the rights of the parties will be finally determined. There are no justification for passing any interim order restraining the defendant from using the said mark. The prayer for an injunction is refused - application disposed off.

Summary

Issues Involved:
1. Proprietorship of the trademark "LIPU"
2. Claim of reverse passing off
3. Grant of interim injunction
4. Proprietorship of the trademark "SUNSHINE"

Detailed Analysis:

1. Proprietorship of the Trademark "LIPU":
The plaintiffs, a registered partnership firm and its partners, sought an injunction to restrain the defendant from using the trademark "LIPU" for sewing and cutting machines imported from China. The plaintiffs claimed to have used this mark since 1994, asserting that it appeared on their packaging, invoices, and other documents. The court noted that typically, an importer cannot claim proprietorship over a mark belonging to an exporter or manufacturer, citing precedents like the Apollinaris Company case and others. The plaintiffs attempted to overcome this by arguing that the mark was imprinted on the machines per their instructions. However, the court found it difficult to believe that the plaintiffs coined the mark "LIPU" and supplied it to the manufacturers, given the invoices were raised by Chinese manufacturers and the plaintiffs were depicted as ordinary retailers.

2. Claim of Reverse Passing Off:
The defendant invoked the doctrine of reverse passing off, meaning representing someone else's goods as one's own. The court referenced cases like Bristol Conservatories Ltd. and John Robert Powers School Inc., which discussed this concept. The court found that both parties imported machines from the same manufacturers in China, and the word "LIPU" was derived from a geographical region in China. Given this, the court found a prima facie case of reverse passing off by the plaintiffs.

3. Grant of Interim Injunction:
The court considered whether the plaintiffs were the proprietors of the mark "LIPU" in India. It concluded that the plaintiffs had not established exclusive use of the mark, as both parties had used "LIPU" for a considerable period without registration. The court noted that the plaintiffs applied for registration only recently, and their right to exclusive use was not established at this stage. Consequently, the court refused the prayer for an injunction but directed the defendant to maintain accounts of sales, authenticated by a Chartered Accountant, and supply copies to the plaintiffs' advocate on a half-yearly basis.

4. Proprietorship of the Trademark "SUNSHINE":
In a related case (GA No. 911 of 2014), the facts were similar, involving the trademark "SUNSHINE." The plaintiffs claimed use of the mark since 1994, while the defendant claimed use from 2007. Both parties applied for registration, with the plaintiffs applying earlier. The court found that both parties imported machines with the mark "SUNSHINE" from different manufacturers in China or Singapore. For the same reasons as in the "LIPU" case, the court refused the prayer for an injunction but directed the defendant to maintain and furnish authenticated sales accounts to the plaintiffs.

Conclusion:
The court refused the interim injunctions in both cases, directing the defendants to maintain and provide authenticated sales accounts. The plaintiffs' claims to exclusive use of the trademarks "LIPU" and "SUNSHINE" were not established at this stage, and the matter would be finally determined at trial.