2012 (3) TMI 706 - HC - Indian Laws

Summary

Issues Involved:
1. Ad-interim injunction for infringement of registered trademark and passing off.
2. Deceptive similarity between trademarks.
3. Validity of assignment of trademark.
4. Use of common trade terms and additional material on packaging.

Summary:

1. Ad-interim injunction for infringement of registered trademark and passing off:
The appeal challenges the order dated 28 November 2012, where the learned Single Judge declined to grant an ad-interim injunction in the appellant's Notice of Motion in a suit for infringement of the registered mark "MERELANE" and passing off. The products involved are playing cards, with the plaintiff owning the mark "MERELANE" and the defendant using "MARICELL No. 7". The Single Judge found no prima facie similarity between "MERELANE" and "MARICELL".

2. Deceptive similarity between trademarks:
The court applied principles from Hiralal Prabhudas v. Ganesh Trading Company to judge deceptive similarity, emphasizing overall similarity rather than microscopic examination. It was concluded that the defendant's products were deceptively similar to the plaintiff's, with both featuring two ducks on their playing cards. The court noted that the addition of "NEW ARRIVAL" and similar color schemes could confuse an average person, leading to a likelihood of deception.

3. Validity of assignment of trademark:
The plaintiff's trademark "MERELANE" was registered in 1971 and assigned to various entities over the years, with the latest being Parksons Games & Sports Pvt. Ltd., which later became PARKSONS Cartamundi Pvt. Ltd. The court considered the Deed of Assignment and the pending application for change of registration. Citing SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd., the court held that pending registration of assignment does not preclude the court from granting interlocutory reliefs.

4. Use of common trade terms and additional material on packaging:
The defendant argued that "No. 7" is common in the trade of playing cards and cannot be exclusively claimed by the plaintiff. The court, however, viewed the trademark "MERELANE No. 7" in its entirety and found that the defendant's use of "MARICELL No. 7" with similar color schemes and additional material like "New Arrival" was deceptively similar. The court emphasized that marks should be compared as a whole, and the additional material did not negate the deceptive similarity.

Conclusion:
The court found a strong prima facie case in favor of the plaintiff and set aside the impugned order dated 28 November 2011. The Notice of Motion was made absolute in terms of prayer clauses (b) and (d) during the pendency of the suit, allowing the plaintiff to seek further relief if required.