2014 (10) TMI 1065 - HC - Indian Laws

Use/infringement of trade mark - Goodwill and reputation - Suit for permanent injunction, damages for infringement of trade mark WORLD BOOK, passing off, dilution, unfair competition, delivery up, and rendition of account or damages against the defendant - use of domain name - main case of the plaintiffs is that the defendant is not entitled to use the trade name/trademark WORLD BOOK as part of defendant s corporate name or trade name - Principles of Balance of Conveniens. HELD THAT - The defendant s entitlement to use other corporate name with different brand name cannot be denied if the defendant would join any book fair or seminar under different corporate name and trademark. The plaintiffs objection in the present case is with respect to the use of the mark WORLD BOOK by the Defendant as a trade name/mark and/or domain name. The logo of the Defendant contained the trade mark/trade name WORLD BOOK of the Plaintiffs. The defendant has no right to use the trade mark/trade name of the plaintiffs in any form whatsoever. The use of the domain name WORLDBOOKCOMPANY.IN on the part of the defendant is also likely to cause confusion and deception in the mind of unwary class of customers. The business of the Plaintiffs is likely to be diverted to the defendant on account of features of the domain which contain the mark of the Plaintiff. The plaintiffs mark WORLD BOOK in the present case is highly distinctive; it has acquired residual goodwill and reputation. It is a registered trademark. Hence, mere defences raised by the defendant are moonshine and flimsy which are against the law. In view of the facts, circumstances and the evidence filed on record, the plaintiffs establish a prima facie case for the confirmation of the ex-parte order of interim injunction. The balance of convenience also lies in favour of the plaintiffs and against the defendant, if the interim order is not continued, the plaintiffs would suffer loss and irreparable injury. On the other hand, the defendant is also under injunction for the last more than one year and four months. Their adoption of the name is not honest. The defendant s application under Order XXXIX Rule 4 CPC is dismissed.

Summary

Issues Involved:
1. Infringement of the registered trademark "WORLD BOOK."
2. Passing off the defendant's business as that of the plaintiffs.
3. Prior use and goodwill of the trademark "WORLD BOOK" in India and abroad.
4. Whether the trademark "WORLD BOOK" is common to trade and publici juris.
5. Use of a similar domain name by the defendant.

Analysis of Judgment:

1. Infringement of the Registered Trademark "WORLD BOOK":

The court discussed Section 29 of the Trade Marks Act, 1999, which deals with the infringement of a registered trademark. It was established that the plaintiffs' mark must be registered, the defendant's mark must be identical or deceptively similar, and the defendant's use of the mark must be in the course of trade in respect of the goods covered by the registered trademark. The court found that the plaintiffs are the registered proprietors of the trademark "WORLD BOOK" in various classes and countries, including India. The defendant's use of "WORLD BOOK" as part of its corporate name and domain name was deemed to infringe upon the plaintiffs' registered trademark.

2. Passing Off the Defendant's Business as That of the Plaintiffs:

The court explained that passing off is a common law remedy aimed at protecting the goodwill and reputation of a business. It was established that the plaintiffs had significant goodwill and reputation associated with the "WORLD BOOK" trademark, both globally and in India. The defendant's use of the same trademark was likely to cause confusion among the public, leading them to believe that the defendant's products were associated with the plaintiffs. This constituted passing off.

3. Prior Use and Goodwill of the Trademark "WORLD BOOK" in India and Abroad:

The plaintiffs provided extensive evidence of the use, goodwill, and reputation of the "WORLD BOOK" trademark since 1917. The court noted that the plaintiffs had been using the trademark in India since 1993 and had significant advertising and promotional activities. The plaintiffs also provided evidence of sales, distribution agreements, and media coverage in India. The court concluded that the plaintiffs were the prior users of the trademark and had established goodwill and reputation in India and abroad.

4. Whether the Trademark "WORLD BOOK" is Common to Trade and Publici Juris:

The defendant argued that "WORLD BOOK" consists of common English words and cannot be exclusively owned by the plaintiffs. However, the court held that even common words could acquire distinctiveness and secondary meaning when associated with a particular business. The court found that the plaintiffs' trademark "WORLD BOOK" had acquired distinctiveness and was not common to trade or publici juris.

5. Use of a Similar Domain Name by the Defendant:

The court discussed the significance of domain names and their protection under trademark law. It was established that domain names serve the same function as trademarks and are entitled to similar protection. The defendant's use of the domain name "worldbookcompany.in" was likely to cause confusion and deceive the public into believing that it was associated with the plaintiffs. The court held that the defendant's use of the domain name constituted passing off and infringement of the plaintiffs' trademark.

Conclusion:

The court confirmed the ex-parte interim injunction restraining the defendant from using the trademark "WORLD BOOK" or any similar mark. The defendant's application to vacate the interim order was dismissed, and the plaintiffs' application for a permanent injunction was allowed. The court held that the plaintiffs had established a prima facie case of trademark infringement and passing off, and the balance of convenience lay in favor of the plaintiffs. The defendant's use of the trademark and domain name was deemed dishonest and likely to cause confusion and deception among the public.