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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 ..... blue hat who lived in Toy Land) story books and 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 b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at 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 are well established. 6. It is alleged that the first defendant is engaged in the in the manufacturing, selling and marketing of cheap and low quality readymade children' apparel under the identical tradename IA No. 8042/2009 I CS(O)S No.1154/2009 Page 3 NODDY in Delhi and NCR, the fourth defendant appears to be the wholesale distributor for Delhi and adjoining areas. The samples of the apparel were collected and it w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 plaintiff's counsel served a second notice to the first defendant and its counsel; the said letters were duly received. The plaintiff claims that in response to a RTI query regarding the status of the opposition filed against the trademark registration application, the plaintiff has received a response stating "as per computer data the status of TMA is registered in respect of No. 657547 in Class 25 and it is renewed ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 section 28(3) of the Trade marks Act, 1999. The defendants also take recourse to section 30(2)(e) of the 1999 Act and say that their acts do not amount to infringement, so long as the mark is a registered one. 11. In 1997, M/s Ishan Apparel came into existence and the mark NODDY with the boy device along with goodwill and other assets and liabilities of the predecessor were assigned to the first defendant throu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o 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 as it was clearly "first past the post" as far as the question of use of the NODDY character is involved. Reliance was placed on the decision reported as Austin Nichols & Co. and Anr. v. Arvind Behl, Director, Jagatjit Industries Ltd. and Anr., 2006 (32) PTC 133. It was further submitted that having objected to the registration application in 2000, and not pursued it, Chorian cannot say that Ishan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d 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 with the goodwill of the business in the course of which the trade mark has been used." 15. Both, the plaintiff and the defendant have secured registration in favour of their respective marks, which in case of the plaintiff comprises on the word NODDY and in case of the defendant comprises of the word NODDY alongwith the caricature of a boy device. As per the averments in the application the applic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... blic 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 1995. In fact, at best the user could be traced to 2001 for which the first sales figures are given or 2002 as it is stated in the "cease and desist" notice served upon the defendant that Egmont sold Noddy in India for the first time in 2002. Another aspect, which the Court cannot ignore is that the plaintiff did object to the defendant's application for registration of the "Noddy ..... X X X X Extracts X X X X X X X X Extracts X X X X
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