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2014 (2) TMI 284 - HC - Companies LawTrademark infringement - Trademark 4T PREMIUM - Use of deceptively similar trademark - Held that - A perusal of the product of the Plaintiff shows that it uses the name of its company before 4T PREMIUM, that is, VALVOLINE 4T PREMIUM and not simplicitor 4T PREMIUM . Similarly the Defendant has though used the word 4T PREMIUM however, the container also depicts its logo and the company name AGIP. Packaging and colouring etc. of the two products are totally different - an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. It was further held that where the similarity between the Plaintiff s and Defendant s mark is too close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff s rights are violated. Defendant is using the word AGIP and its logo along with 4T PREMIUM and not simplicitor 4T PREMIUM . Further even the Plaintiff is using the word VALVOLINE with 4T PREMIUM and not 4T PREMIUM . In view of the aforesaid discussion, I find no reason to grant interim injunction in favour of the Plaintiff and against the Defendant - Decided against Appellant.
Issues Involved:
1. Claim for ad-interim injunction by the Plaintiff. 2. Alleged infringement and passing off of the Plaintiff's trademark '4T PREMIUM'. 3. Defendant's challenge to the Plaintiff's exclusive right to use '4T PREMIUM'. 4. Defendant's application for cancellation of Plaintiff's trademark. 5. Consideration of descriptive and generic nature of the trademark. Issue-Wise Detailed Analysis: 1. Claim for Ad-Interim Injunction by the Plaintiff: The Plaintiff sought an ad-interim injunction against the Defendant under Order XXXIX Rule 1 and 2 CPC, to restrain the Defendant from using the trademark '4T PREMIUM' or any mark deceptively similar to it. The Plaintiff argued that its trademark '4T PREMIUM' had been used extensively, continuously, and uninterruptedly since 2003 and had acquired significant goodwill and recognition among consumers in India. The Plaintiff claimed that the Defendant's use of the trademark '4T PREMIUM' was likely to cause confusion and deception among the public. 2. Alleged Infringement and Passing Off of the Plaintiff's Trademark '4T PREMIUM': The Plaintiff contended that the Defendant's use of '4T PREMIUM' constituted an infringement of its registered trademark (No. 1261544) and amounted to passing off the Defendant's goods as those of the Plaintiff. The Plaintiff emphasized that it did not claim exclusive rights over the term "4T" but was aggrieved by the Defendant's use of the combined term '4T PREMIUM'. 3. Defendant's Challenge to the Plaintiff's Exclusive Right to Use '4T PREMIUM': The Defendant argued that the Plaintiff could not claim exclusive rights over the terms "4T" or "4T PREMIUM" as "4T" denotes four-stroke engine oil and "PREMIUM" is a laudatory term descriptive of the goods. The Defendant used its trademark 'AGIP' with '4T PREMIUM' and asserted that its packaging was distinct from that of the Plaintiff, thus negating any possibility of confusion or passing off. The Defendant also highlighted that it had filed an application before the Intellectual Property Appellate Board for the cancellation of the Plaintiff's trademark. 4. Defendant's Application for Cancellation of Plaintiff's Trademark: The court noted that the Defendant had filed an application for the cancellation of the Plaintiff's trademark before the Intellectual Property Appellate Board, which necessitated the stay of the present suit under Section 124 of the Trademark Act. However, the stay of the suit did not bar the court from deciding the application for an ad-interim injunction. 5. Consideration of Descriptive and Generic Nature of the Trademark: The court examined whether the terms "4T" and "PREMIUM" were descriptive or generic. It referred to precedents where descriptive terms were not granted exclusive rights unless they had acquired a secondary meaning and distinctiveness through extensive use and publicity. The court observed that both the Plaintiff and Defendant used their respective company names along with '4T PREMIUM' (i.e., VALVOLINE 4T PREMIUM and AGIP 4T PREMIUM). The court found that the packaging and coloring of the products were entirely different, reducing the likelihood of confusion. Conclusion: The court concluded that the Plaintiff could not claim exclusive rights over the descriptive term '4T PREMIUM'. The Defendant's use of its trademark 'AGIP' along with '4T PREMIUM' did not constitute infringement or passing off. The court dismissed the Plaintiff's application for an ad-interim injunction, finding no reason to grant such relief.
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