2014 (1) TMI 1217 - HC - Companies Law

Trademark infringement - Use of plaintiff s registered trademark REAL - Whether an action for infringement is made out by the Plaintiff, prima facie - Held that - Plaintiff has applied for rectification of the mark of Defendant No.1 and the proceedings arising therefrom is pending before the Intellectual Property Appellate Board ( PAB ). Therefore, it is possible for the Plaintiff to contend that the question whether Section 28 (3) of the TM Act precludes the Plaintiff from seeking to restrain Defendant No.1 from infringing its mark will have to await the decision of the IPAB on the Plaintiff s challenge to the validity of the registration in favour of Defendant No.1. That stage is yet to be reached. Therefore, the fact that Defendant No.1 is a registered proprietor of an identical mark in the same class cannot preclude the Plaintiff from seeking to restrain Defendant No.1 from using the mark REAL. Therefore, it is not using the whole mark for which it has registration, but only a part of it. Also, Defendant No.1 has recently changed the writing style of the word REAL on the label of its products thus bringing it closer to the Plaintiff s manner of writing REAL . The defence under Section 28 (3) of the TM Act would be available only if Defendant No.1 was using the entire mark for which it holds registration and not only a part of it - The invoices and other material produced by the Plaintiff show prima facie that it has been extensively marketing its REAL juices throughout India for several years. The volume of sales is considerably higher than the products of Defendant No.1 in the State of Goa. The Plaintiff has been prima facie able to show that its products sold under the REAL label enjoy reputation and goodwill. Permitting Defendant No.1 to use the mark REAL at this stage outside Goa will adversely impact the distinctiveness, reputation and goodwill enjoyed and will dilute the mark REAL registered in favour of the Plaintiff. In terms of Section 29(2) read with Section 29(3) of the TM Act, identical marks in relation to cognate and allied goods, and in this case, similar goods, viz., Soda, aerated drinks and fruit juices of Defendant No.1 and fruit juices of the Plaintiff, are bound to cause confusion in the mind of a consumer of average intelligence. The manner of writing REAL by Defendant No.1 brings it closer to the Plaintiff s mark. It is clearly different from the style in which REAL is written in the marks REAL MANIK and REAL SODA for which Defendant No.1 holds a registration. There is no satisfactory explanation as to why it chose to do so. In the circumstances, there is prima facie merit in the contention of the Plaintiff that the adoption of the aforementioned manner of writing REAL by Defendant No.1 cannot be said to be honest - Decided in favour of Petitioner.

Summary

Issues Involved:
1. Trademark Infringement
2. Passing Off
3. Maintainability of the Suit
4. Jurisdiction
5. Prior Use and Goodwill
6. Section 28(3) of the Trade Marks Act, 1999
7. Interim Relief

Detailed Analysis:

1. Trademark Infringement:
The Plaintiff, a well-known FMCG company, alleged that Defendant No.1 was infringing on its registered trademark 'REAL' by using the same mark for its fruit-flavored drinks and aerated drinks. The Plaintiff argued that the use of the identical mark by Defendant No.1 was likely to cause confusion and deception among consumers, constituting trademark infringement. The Court noted that Defendant No.1's use of 'REAL' was prima facie likely to cause confusion and dilute the Plaintiff's trademark. The Court held that the Plaintiff was entitled to protection against the use of the mark 'REAL' by Defendant No.1 outside Goa.

2. Passing Off:
The Plaintiff also sought relief on the grounds of passing off, claiming that Defendant No.1's use of the mark 'REAL' misrepresented its goods as those of the Plaintiff, thereby causing damage to the Plaintiff's goodwill. However, the Court found that the Plaintiff's pleadings regarding the availability of Defendant No.1's products in Delhi were vague. Since Defendant No.2 had already suffered a decree and was no longer part of the case, the Court concluded that the suit for passing off was not maintainable.

3. Maintainability of the Suit:
Defendant No.1 challenged the maintainability of the suit under Section 134(1) of the Trade Marks Act, 1999, arguing that the Plaintiff could not seek protection for the word 'REAL' alone. The Court rejected this challenge, citing the law explained in Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, which allows the Plaintiff to claim protection for the prominent feature of the label mark 'REAL'. The Court held that the suit for infringement was maintainable.

4. Jurisdiction:
The Court addressed the issue of jurisdiction, noting that the Plaintiff had an office in Delhi and its products were widely available in Delhi. The Court held that it had the jurisdiction to entertain the suit as one for infringement under Section 134(1) of the Trade Marks Act, 1999.

5. Prior Use and Goodwill:
Defendant No.1 claimed to be the prior user of the mark 'REAL' in Goa since 1976 and argued that the Plaintiff could not monopolize the word 'REAL'. The Court found that Defendant No.1's use of the mark 'REAL' was limited to Goa and that the Plaintiff had been extensively marketing its 'REAL' juices throughout India for several years, establishing considerable goodwill and reputation. The Court held that the Plaintiff was prima facie entitled to restrain Defendant No.1 from using the mark 'REAL' outside Goa.

6. Section 28(3) of the Trade Marks Act, 1999:
Defendant No.1 argued that under Section 28(3) of the Trade Marks Act, 1999, the Plaintiff could not sue for infringement as both parties held registrations for identical marks. The Court noted that the protection to a mark is conditional upon its validity and that the Plaintiff had applied for rectification of Defendant No.1's mark, which was pending before the Intellectual Property Appellate Board (IPAB). The Court held that the Plaintiff was not precluded from seeking to restrain Defendant No.1 from using the mark 'REAL'.

7. Interim Relief:
The Court addressed the interim relief granted by the Division Bench, which allowed Defendant No.1 to use the registered trademark 'REAL MANIK' within Goa. The Court maintained this interim arrangement, allowing Defendant No.1 to use its registered marks 'REAL MANIK' and 'REAL CAF'E' within Goa, but not outside it. The Court emphasized that this order did not constitute a final opinion on the merits of the case.

Conclusion:
The Court directed that the interim arrangement put in place by the Division Bench would continue during the pendency of the suit. The Plaintiff's application for interim relief was disposed of, and Defendant No.1's application for vacation of the stay order was dismissed, with no order as to costs.