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TMI Blog2001 (8) TMI 1421X X X X Extracts X X X X X X X X Extracts X X X X ..... from using the trade mark FLEXGRIP upon or in relation to their writing instruments or other articles of stationery in violation of the plaintiffs, common law rights in the trade mark FLEXGRIP. The defendant no.1 is only a retail outlet which is trading in various stationery items and the defendant no.3 is Sales Office of the defendant no.1. It is infact the defendant no.2 - Sanghvi Writing Industries Limited. Mumbai which is the manufacturer and seller of writing instruments and other articles of stationery. This Company is manufacturing and selling the writing instruments including ball pliant pens, etc. under the trade mark EKCO. 2. The dispute however in the present case is that the plaintiff is the exclusive proprietor of trade mark 'FLEXGRIP' and the defendants have no right to use the word 'FLEXGRIP' in its writing instruments. It may be mentioned that the plaintiff is using for its product the trade mark 'PAPER MATE FLEXGRIP' and the defendants are using the word 'FLEXIGRIP' Along with the word 'EKCO' on its products i.e. 'EKCO FLEXGRIP'. 3. Along with the Suit, the plaintiff also filed Ia. 12520/99 under Order XXXIX R ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... with trade mark 'FLEXGRIP' are that of the plaintiffs and the defendants are thereby trying to pass of its goods as that of the plaintiffs. 3. The plaintiffs have filed case of infringement of trade mark against the defendants in Germany on the same ground. The defendants in that case gave statement that the defendants would not use the trade mark 'FLEXGRIP' in respect of these very goods and thereby accepting the exclusive right of the plaintiffs to use the trade mark 'FLEXGRIP'. In view of this stand of the defendants in a competent Court of law in Germany it was not permissible for the defendants to take contrary stand when the case is filed in India. 5. It may be mentioned at this stage that in an action brought by the plaintiffs against the defendants before the Original Court at Frankfurt (Case no.3/12 O 138/97), the defendants had sent the fax message dated 29th May, 1998 to the said Court, inter alia, stating as under:- We have received the judgment passed by your honour dated 20.4.98, in our office on 27.4.98. 6. We, the defendant above named state as follows: 1. The defendant does not wish to defend the action in the abov ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... two local companies by separate orders of interim injunction from using BENZ and MERCEDES respectively. The restraint order in respect of BENZ involved a company in India engaged in sale of undergarments under trade mark VIP-BENZ in combination with a three-pointed human figure in a ring - characteristic of the three-pointed star device of Daimler Benz AG - with the legend Germans would be proud of it . While upholding the plaintiff's claim for interim injunction, the High Court made the following observations: I think it will be a great perversion of the law relating to trade marks and designs, if a mark of the order of the 'MERCEDES BENZ', its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs - not available to any person to apply upon anything or goods. That name which, is well known in India and worldwide, with respect to cars, as is its symbol a three-pointed star. Yet another observation in this case was: In my view, the trade mark law is not intended to protect a person who delibe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sary. The earlier conventions which are administered by the World intellectual Property Organisation and the provisions of the TRIPS Agreement are a step towards such international protection of intellectual property rights. Suitable laws which will protect such rights internationally and give adequate monetary compensation to the owner without creating any undue monopoly in the property can and are being formulated as standards for laws to be enacted by the different countries of the world. These standards reflect the experience of various countries of the world in protecting and enforcing such rights, while taking care of public interest in the availability of new ideas and technologies . 7. It was further submitted that the above article was cited in Caesar Part Hotels and Resorts Inc. versus Westinn Hospitality Services Ltd. 1999 19 PTC 123 (Mad) . Following extract was quoted:- Thus, it is manifestly clear that the plaintiff in order to get the relief of interim injunction restarting the defendant from using its service mark need not establish that they actually carry on business in this country. It is enough if they have got customers hers. 8. In the case of N.R. D ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ocutory injunction by the trial court indicate that the exercise of discretion was in accordance with the settled principles of law relating to the grant of interlocutory injunctions in a passing off action. The affirmance of the trial court's order by the Division Bench on an appeal reinforces the trial court's view. 10. In another case entitled Allergan Inc. versus Milment of the Industries and others 1999 (19) TC 160 Cal. the Court cited from the case of N.R. Dongre (supra) as follows:- The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinemas etc. even though there may not be availability of the product in those countries because of import restrictions or ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g so. 12. In Central Industrial Alliance Ltd. versus Gillette U.K. Ltd. reported in 1998 (18) TC Bom. the Court observed as follows:- In addition, it has to be remembered that in respect of a consumer article such as a safety razor blade publicity does not take place merely by advertisements in India. Such items are advertised in foreign newspapers and magazines and these newspapers and magazines are circulated in India and are freely imported and presumably read. Apart from this, judicial notice may be taken of a large number of Indians who go out temporarily to other countries, mainly to the Middle-East countries, and who, Therefore, had the opportunity to use, the plaintiff's blades. These persons do not permanently settle down abroad and return to India after their two year or three year stay. 13. In the case of Indian Shaving Products Ltd. and another versus Gift Pact and another reported in 1998 (18) PTC 698 this Court observed as under:- The world with the passage of time has become almost just like a city on account of the technical advancements in technology such as wireless, telephone, television, cinema, and computers so on and so forth, made by the p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ceived. Her submission was that no evidence has been filed at the prima facie stays to show any transborder reputation before this Hon'ble Court. It was contended the except for two affidavits and printouts from the website of the plaintiff no other evidence is placed on record and these cannot be considered for deciding the issue on transborder reputation because the website printouts were admittedly taken a month prior to filing of the suit. These printouts refer to the mark FLEXGRIP as PAPERMATE FLEXGRIP ULTRA, PAPERMATE, ETC. The print outs of pages 8-12 are dated 28th July, 1999 and 23rd August, 1999 and the Suit has been filed in December 1999. The affidavits refer to PAPERMATE rather than FLEXGRIP. Reliance was placed upon the case of The Proctor and Gamble Company versus Satish Patel reported in 1996 PTC 646 to contend that such material would not be sufficient to establish cross border reputation. In this case the plaintiff was a well known multinational and sought to restrain the defendant from using the mark SAFEGUARD which was admittedly registered by the plaintiff in more than 90 countries and had been advertised in well-known magazines like The Time, News Week, Re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d not infringement of trade mark inasmuch as there was no trade mark registered in favor of the plaintiff. In the case of passing off action what was required to be seen as to whether there will be confusion and deception in eyes of the consumer. In the defendant's submission any confusion is obviated by the fact that the defendant has been continuously using the mark since 1993 coupled with the fact that the consumer is well aware of the product EKCO FLEXGRIP and cannot confuse with the plaintiff's LUXOR PAPERMATE FLEXGRIP. The Suit is barred by delay, laches and acquiescence. In the case of Shri Gopal Engineering and Chemical Works versus M/s. POMX Laboratory reported in AIR 1992 Delhi 302 there was unexplained delay of 14 months in filing of the suit. This Court held that delay coupled with the concurrent use by the defendant till the alliance in favor of the defendant. In Peshawar Soap and Chemicals Ltd. versus Godrej Soap Ltd. reported in 2001 PTC 21 (Del.) the plaintiff was registered proprietor of the mark 'Kesh Nikhar' since 1963. The defendant adopted the mark 'Godresj Nikhar'. The plaintiffs obtained an ex-parte injunction against the defendants us ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the plaintiff's trade mark FLEXGRIP in India. It was submitted that in the application dated 19th January, 1995 filed by the plaintiff for registration of this trade mark, the plaintiff has itself stated proposed to be used which shows that till 1995, that is the date of application, this trade mark has not been used by the plaintiff's in India. On the other hand, the defendant had produced documentary evidence (invoices filed at pages 5-116 of the defendants documents) to show that defendants had been using FLEXGRIP since 1993. 6. Explaining the circumstances in which decree was passed by the German Court it was submitted that the undertaking given by the defendant before the Court in Germany was that the defendant has never sold and does not intend to sell any product under the mark FLEXGRIP. This happened in 1997 and admittedly the plaintiff was then well aware that the defendant was continuously using the mark FLEXGRIP in India. However, it chose to take no action against the defendant till 1999. In 1999 the plaintiff entered into a business arrangement with Luxor Writing Instruments in India and it was only then that it decided to market their FLEXGRIP pens in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by the fact that the word 'FLEXGRIP' is descriptive in nature because of the use of the word descriptive in nature because of the use of the word GRIP that too used in relation to pens and other writing instruments. No doubt the fusion of two words namely, FLEX and GRIP and joining them together may become a distinctive word when this aspect is to be considered in isolation. However, looking into this aspect along with other relevant factors as mentioned above, it does not appear to be a case of creating confusions in the minds of the public. Here it would also be relevant to mention that the defendant no.2 is laos an established Company which has made strides in this particular trade, namely that of manufacturing and marketing pens and other writing instruments. It has been in the business for last number of years. Its products are many. It markets its products not only in India but in other counties as well. The defendant no.2 started manufacturing and marketing the alleged infringed products i.e. the writing instruments with the trade mark 'EKCO FLEXGRIP' since 1993. By that time, the plaintiffs had not started marketing its products in India. Even the applicati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weight one need against another and determine where the 'balance of convenience' lies. The interlocutory remedy is intended to preserved in status quo, the rights of parities which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprises or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet commence his enterprise, are attracted. As regards the delay in institution of the suit and its effect for the purpose of grant of ex parte restraint, the settled legal position is that while the delay in institution of a suit for an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex party/interlocutory injunction. Reference in this regard is in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ; and 'GRIP' are descriptive words. 4. It was unlikely that consumers would be confused when the two marks 'EKCO FLEXGRIP' and 'LUXOR PAPER MATE FLEXGRIP' are compared. 5. Particularly when the defendant no.2 is also an established Company using the trade mark EKCO in respect of it s products and in view of the good-will it enjoys that word EKCO used along with FLEX GRIP would be sufficient to distinguish its product from that of the plaintiff. 6. The defendant no.2 is using the trade name EKCO FLEXGRIP in respect of two of its products only out of more than 20 products marketed by its. This use in respect of these two products is in India since 1993. 7. The plaintiffs have moved this Court much belatedly. Even after coming to know of the fact that the defendant no.2 was marketing the products with the aforesaid trade mark way back in 1997. Although it filed the case in German Court buy did not take any steps in Courts in India presumably because of the reason that it had, at that time, no intention to market its products in India and was not bothered for the use the trade mark 'EKCO FLEXGRIP' by the defendant no.2 in India. I also a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d high cost of litigation when the injunction was not harming the defendant no.2 Germany, as it has not intention to sell its product in Germany, would not be of help to the plaintiff while reexamining the present case filed in India. Considering all these facts and circumstances of the case and also keeping in mind the principles governing the grant of temporary injunction, I am of the considered opinion that the plaintiff has not been able to make out a case for ad interim injunction. IA.12520/99 filed by the plaintiff is accordingly dismissed. IA. 3572/2000 filed by the defendant no.2 is allowed and the Interim Order dated 16th December, 1999 is hereby vacated. However, the defendant no.2 is required to maintain separate account in respect of manufacture and marketing of its two products under the trade mark 'EKCO FLEXGRIP' so that it is able to file the same in the Court as and when required. Needless to mention, the entire matter is examined on the touch stone of Order XXXIX Rule 1 and 2 dealing with the application for ad-interim injunction and Therefore views expressed above are tentative and prima facie conclusions which shall not be treated as any final ex ..... X X X X Extracts X X X X X X X X Extracts X X X X
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