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TMI Blog2010 (4) TMI 1175X X X X Extracts X X X X X X X X Extracts X X X X ..... d that it has expanded its use of the IA No. 8042/2009 I CS(O)S No.1154/2009 Page 1 NODDY word and image mark through a range of merchandise in India. The history of the Author and her works, including NODDY, and their popularity is given on pages 2 to 8 of the application. To summarise, the details of media featuring NODDY includes, print media, television, internet, etc. and that the author is a well-known personality and the recipient of various accolades for her works in the field of literature. The plaintiff has introduced various books in the NODDY range, including classic stories, TV tie-in books (based on NODDY television series) and activity books. It is stated, these books are designed to help children develop through reading, colouring and other activities and are priced between ₹ 25 to ₹ 75. The said books are marketed from all gift and book shops, kids' stores, supermarkets and malls across the country. The character of Noddy is depicted here: 3. The plaint avers that BBC Worldwide is the plaintiff's licensing and marketing agent in India. The Make Way For Noddy television series was first broadcasted in India in 2002 and is still being broadca ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 8,291,000 39,000 2008 7,882,000 30,000 4. In order to protect its rights, the plaintiff actively pursues the infringers both in India and abroad and continues to take appropriate measures across the world. It is claimed that the trademark NODDY has achieved distinctiveness and such degree of association with plaintiff that the use of identical or deceptively similar in relation to any goods and services is bound to be indicating a connection, in the course of trade or of rendering of services, between those goods or services and the persons using and having knowledge of the mark in relation to goods and services of the plaintiff under the NODDY mark. It is pertinent that a substantial number of parents and children in India exclusively with the plaintiff. 5. The suit alleges that the said trademark is a well-known mark in India and the unauthorized use of NODDY in relation to any goods or services of any nature is likely to dilute the distinctive character of the mark as well as passing off. The plaintiff submits that its statutory as well as common law rights in the mark NODDY ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... emark and device, filed with the Registrar of Trademarks, New Delhi under application no. 657547 in relation to readymade garments and other items included in class 25. The said application was published for opposition in the Trade Marks Journal no. 1229, dated 21.08.2000. A notice of opposition was filed by the plaintiff to the said application, which was duly acknowledged. The plaintiff made inquiries in the market and found that there was no use of the said mark at that time, therefore, on legal advice, found it needless to approach the Court for an injunctive relief. However, despite pending opposition, the said trademark application got erroneously matured to registration, the plaintiff did not receive any notice Registrar's office IA No. 8042/2009 I CS(O)S No.1154/2009 Page 4 stating rejection of its opposition application. Thereafter, the plaintiff has continuously pursued remedial measures with the Trade Marks Registry, Mumbai to have the said registration certificate recalled/cancelled ant to have the opposition proceedings reactivated. The plaintiff has filed copies of correspondence with the Trade Marks Registry, Mumbai in this regard. 8. On 16.12.2008 the plainti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rian, prior use stands established clearly; it is IA No. 8042/2009 I CS(O)S No.1154/2009 Page 5 lastly submitted that the Court should in any case take notice of the fact that the sales, world wide, of NODDY books was over 200 million copies. 10. The defendants, in their reply to the plaintiff's interim injunction application question the territorial jurisdiction of this Court to entertain the present suit stating that suit for infringement passing off can lie where the defendant is based, the first three defendants are admittedly in Mumbai and the fourth defendant is the dealer for defendant no. 1 and 2 (who the proprietor of defendant no. 1), besides no cause of action has arisen against the defendant with the territorial jurisdiction of this Court. The plaintiff has not filed any proof of sale of the impugned goods by the fourth defendant. The defendant does not deny that it has inherited business from its predecessor, M/s Noddy Apparels and that in 1995, the said word mark and device was applied for registration, to afford better protection. The defendants claim that it is a fanciful mark. As the said registration is valid and in force, the defendants are protected under ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vice as coming from the defendant and there is no question of confusion. The defendant places reliance on a certificate of participation in a Trade Fair in or about 1997-98. It is claimed that the plaintiff has no inclination to use the said mark in relation to garments or for any other goods or services except for printed matter or publications meant for children, the intention of the plaintiff is stated to be of licensing the use of the said mark for the purpose of identifying/promoting the said mark and that there is no real trade connection between the proprietor and licensees of the goods/services. The rest of the contentions in the application are denied in general. 13. Interestingly, the defendant denies that Ms. Enid Blyton was famous for creating the fictitious character of NODDY, as also that she was a famous children' storlyteller of twentieth century. The defendant further submits that when its predecessor adopted the said mark there were restrictions on the import of foreign made goods articles to India and that actual liberalization started after India signed the TRIPS and GATT treaties in/around 1997. 14. The defendant emphasizes that it cannot be injuncted ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... omer, J., in Batt case ((1898) 2 Ch D 432, 436 : 15 RPC 262, 266) was confirmed by the Court of Appeal ((1898) 2 Ch D 432, 439 and 442) and by the House of Lords sub nomine John Batt Co. v. Dunnett (1899 AC 428 : 16 RPC 411). 38. To get a trade mark registered without any intention to use it in relation to any goods but merely to make money out of it by selling to others the right to use it would be trafficking in that trade mark. In Re American Greetings Corp's Application ((1983) 2 All ER 609, 619), Dillon, L.J., said in the Court of Appeal : 'Trafficking in a trade mark has from the outset been one of the cardinal sins of trade mark law. But there is no statutory definition of trafficking, and one may suspect that, as with usury in the Middle Ages, though it is known to be a deadly sin, it has become less and less clear, as economic circumstances have developed, what the sin actually comprehends.' Trafficking must involve trading in or dealing with the trade mark for money or money's worth, but it is not all dealing with a trade mark for money that is objectionable, since it has always been accepted that it is permissible to self a trade mark together ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rs or the fame of celebrities by licensing such famous fictional characters to others. The fictional characters are generally drawings in which copyright subsists, e.g., cartoon and celebrities are living beings who are otherwise very famous in any particular field, e.g.; film stars, sportsmen. It is necessary for character merchandising that the characters to be merchandised must have gained some public recognition, that is, achieved a form of independent life and public recognition for itself independently of the original product or independently of the milieu/area in which it appears. Only then can such character be moved into the area of character merchandising. This presumes that the character has independently acquired such reputation as to be a commodity in its own right independently of the goods or services to which it is attached or the field/area in which it originally appears IA No. 8042/2009 I CS(O)S No.1154/2009 Page 9 17. The case at hand is clearly one involving character merchandising. The plaintiff has established its huge sales in India and abroad for the period during 2000 and 2008 but, unfortunately, it has failed to establish user of the mark prior to 1 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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