1997 (10) TMI 411 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of the registered trademark "ARROW."
2. Passing off goods by using a deceptively similar mark.
3. Use of the word "ARROW" in the defendant's trade name.
4. Delay and non-use of the trademark by the plaintiffs.
5. Prior use and honest adoption of the trademark by the defendants.
6. Balance of convenience and irreparable harm.

Detailed Analysis:

1. Infringement of the Registered Trademark "ARROW":
The plaintiffs sought to restrain the defendants from using the registered trademark "ARROW" in relation to readymade garments. The plaintiffs argued that their mark had been registered in India since 1955-60 and had been renewed every seven years. The plaintiffs claimed that the defendants' use of the mark "ARROW" constituted an infringement of their registered trademark.

2. Passing off Goods by Using a Deceptively Similar Mark:
The plaintiffs also sought to restrain the defendants from passing off their goods as those of the plaintiffs by using the mark "ARROW" or any deceptively similar mark. The plaintiffs argued that the defendants' use of the mark "ARROW" would deceive customers into believing that the goods were those of the plaintiffs, thereby causing confusion and deception.

3. Use of the Word "ARROW" in the Defendant's Trade Name:
The plaintiffs contended that the defendants' use of the word "ARROW" as part of their trade name "ARROW APPARELS" constituted an infringement and passing off. The plaintiffs argued that the use of the word "ARROW" in the trade name would mislead customers into thinking there was an association between the plaintiffs and the defendants, thereby trading on the plaintiffs' reputation.

4. Delay and Non-Use of the Trademark by the Plaintiffs:
The defendants argued that the plaintiffs had not used the trademark "ARROW" in India for a significant period, thereby abandoning their rights. The defendants claimed that the plaintiffs' advertisements in foreign magazines did not constitute use of the mark in India. The court noted that the plaintiffs had not provided clear evidence of the mark's use in India before 1985 and that there was no strong reason given for the non-use of the mark in India prior to 1990.

5. Prior Use and Honest Adoption of the Trademark by the Defendants:
The defendants claimed to have been using the trademark "ARROW" since 1985 and had applied for its registration in 1991. They argued that their use of the mark was honest and uninterrupted, and that they had conducted a market survey before adopting the mark to ensure no other similar mark was in use. The court found that the defendants had made out a strong prima facie case of prior use and honest adoption of the mark.

6. Balance of Convenience and Irreparable Harm:
The court considered the balance of convenience and the potential for irreparable harm. It noted that the defendants had been using the mark "ARROW" since 1985 and had established an organized business with a significant turnover. The court found that granting an injunction would cause irreparable harm to the defendants and disrupt their business. Instead, the court directed the defendants to maintain an account of profits and forward it to the plaintiffs every year.

Conclusion:
The court refused to grant the plaintiffs' prayer for an injunction, citing the defendants' strong prima facie case of prior use and honest adoption of the trademark "ARROW." The court emphasized that the plaintiffs had not used the mark in India for a significant period and that granting an injunction would cause irreparable harm to the defendants. The court directed the defendants to maintain an account of profits and forward it to the plaintiffs annually. The motion was disposed of with no order as to costs.