At, High Court of Judicature at Calcutta
By, THE HONOURABLE MR. JUSTICE ASHIM KUMAR BANERJEE
For the Appearing Parties: Bhaskar Sen, Gopal Dutt, Sudipta Sarkar, Advocates.
ASHIM KUMAR BANERJEE,J
(1) PLAINTIFF being a registered holder of the trade mark "vip" has brought this action against the defendant for infringement of trade mark and copyright belonging to the plaintiff and for other reliefs. An interim application has been made by the plaintiff, inter alia, praying for injunction restraining the respondent from using the mark "vip" in relation to any hosiery products or readymade garments similar to the mark of the petitioner as also for other consequential relief. On the said application being moved on 29th October, 1999 an ad interim order of injunction was passed restraining the respondent from using the trade mark herein. The said interim order is still continuing. Now the matter has come up for final hearing before me.
(2) MR. Sudipta Sarkar, learned counsel appearing for the plaintiff/petitioner submits that since he is the holder of the registered trade mark under the Trade and Merchandise Marks Act, 1958 as well as under the Copyright Act the plaintiff is entitled to use the said mark "vip" in any of its products and none others are entitled to use the same. Mr. Sarkar has prayed for continuation of the ad interim order passed on 29th October, 1999 till the disposal of the suit.
(3) MR. Bhaskar Sen, learned counsel appearing for the defendant has contended that the application of the plaintiff/petitioner is liable to be dismissed on the following grounds :
(i) There has been no document annexed to the pleadings to show that the mark which was originally registered in favour of the plaintiff/petitioners have been renewed from time to time. In absence of such valid registration as of date and more so since the application of the defendant for registration of such mark is pending with the concerned authority the defendant is entitled to carry on its business by using the mark "vip".
(ii) This application is defeated by delay and acquiescence ;
(iii) The mark used by the plaintiff and the mark used by the defendant are not identical and/or similar and there cannot be any confusion amongst the ultimate consumers which could entitle the plaintiff to bring an action for passing off;
(iv) No particulars relating to sale of the products having the mark "vip" has been disclosed by the plaintiff.
With regard to the first point my attention has been drawn to the latest certificate issued by the authority concerned. Mr. Sarkar submitted that by mistake the latest certificate had not been annexed and on instruction he contended that all the registration certificates issued by the concerned authority are still valid. Hence the first ground of Mr. Sen is not tenable on the tactual score.
(4) With regard to the second ground Mr. Sen relied on four decisions which are as follows: (1) 1990 (Suppl.) SCC 727; (2) ; (3) AIR 1992 Delhi 302. (4). Mr. Sarkar on the contrary placed reliance upon the following decisions : (1) ; (2) ; (3) ; (4).
Mr. Sarkar while dealing with this point on the factual score has drawn my attention to the Affidavit-in-Reply filed by the petitioner wherein it shows that although in 1994 desist notice was served upon the defendant as well as the other unauthorised users, there have been continuous attempts made by and on behalf of the plaintiff/petitioner to stop unauthorised user of the said mark. Some of the documents pertaining to this action have been annexed to the said Affidavit-in-Reply. According to Mr. Sarkar, even those attempts could not give any fruitful result and the plaintiff-was ultimately compelled to initiate proceedings against the unauthorised users including the defendant. Hence, according to him, the question of delay and/or acquiescence and/or waiver is relevant in the instant case.
(5) HOWEVER, since the parties have relied on the various decisions of the Apex Court as well as other High Courts and an issue has been raised on that score, let me deal with such question.
(6) THE cases cited by the parties are dealt with herein below in seriatim : By this judgment learned single Judge of the Delhi High Court held that if it is established that the defendant is using the mark of the plaintiff with the knowledge that he is violating the plaintiff's right delay should not defeat the prayer for injunction. It was also held that where there is honest concurrent user by the defendant then delay may defeat the claim of damage or rendition of accounts but in any event injunction should not be refused. In the instant case the plaintiff is admittedly registered user of the mark. The defendant was put on notice in the year 1994. It is the case of the defendant that they were still using the mark on the date when the suit was filed. Hence the plea of delay cannot be sustained. 1990 (Suppl.) SCC 727 : the facts in this case are totally different from the present one. In the instant case the defendant was using the mark prior to the plaintiff's use. The single bench of the High Court held accordingly. The Apex Court was of the view that the Court of Appeal failed to dislodge the prima facie finding of the learned single Judge nor did it recognise the crucial fact of the prior use by the defendant on the plaintiff's case in a passing off action. The Apex Court considered the facts and was of the view that since the discretion had been exercised by the single bench the case did not warrant interference by the Court of Appeal. In the said case the particular mark was being used by the defendant prior to the plaintiff's use. That fact was taken into consideration by the Apex Court which was a relevant factor. Such is not the case herein. Hence this case does not support Mr. Sen's contention. This is a case of deceptive similarity. The learned single Judge of the Bombay High Court in this case has considered two marks of the respective parties being "betaloc" and "betalong". Here also the order of injunction was made absolute. While making the interim order absolute the learned single Judge was of the view that deceptive similarity should be judged by the test whether the said two marks were similar phonetically, visually and structurally. In the instant case not only both the marks arc phonetically and visually similar but also these two marks are identical. AIR 1992 Delhi 302 : In the instant case a learned single Judge of the Delhi High Court refused injunction on the ground that the plaintiff could not-establish the improper and sinister motive and the defendant was using the mark honestly. Such fact coupled with unexplained delay prompted the learned Judge to refuse the order of injunction. With due respect to the learned single Judge I cannot agree with the decision of his Lordship. In my view in an infringement action specially when the defendant had been put on notice that he was using somebody else's mark which is duly registered in accordance with law and if the defendant continues to enjoy such mark despite such notice delay cannot stand in the way in granting the order of injunction. This aspect, however, was not discussed by the learned Judge. In any event, in may view, honest concurrent user of a registered mark by another party is not a valid defence in an injunction application. Although this case has been cited by Mr. Sen, in my view it does not support the contention of the defendant. The Apex Court while dealing with the question of acquiescence held that if the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crash it, then the plaintiffs would he stopped by their acquiescence. In the instant case there has been constant effort on the part of the plaintiff as I have discussed hereinbefore to stop the defendant from using the registered mark of the plaintiff. In my view the test is to find out whether such acquiescence in the infringement action amounts to consent by the registered user or not. Mr. Sen has not drawn my attention to any of the documents or any of the acts on the part of the plaintiff which can be termed as expressed or implied consent by the plaintiff which could defeat the order of injunction. In this case the Apex Court while dealing with two marks being "duckback" and "dackback" decreed the suit of the plaintiff. However, the facts and the point in issue discussed in the said judgment are totally different from the present one. In the said case the decree was refused to the plaintiff on the ground that the said suit was barred under Order 2, Rule 2 of the Code of Civil Procedure. I do not find any application of the said judgment in the present case. In the instant case, the Division Bench of this court was of the view that since the defendant was put on notice about the registered mark no surprise could have been expressed by filing of the suit. In the said case although the defendant was put on notice in 1994 the suit was filed in the year 1996 and the question of delay was raised by the defendant. The Division Bench while confirming the ad interim order of injunction directed the same to continue till the disposal of the suit. Paragraphs 25 and 26 of this judgment are relevant herein and is quoted below : "25. It is well settled that the plaintiff must prove that essential features of his registered mark have been copied. The onus to prove "deception" is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its "essential features". The identification of an essential feature depends partly on the courts own judgment and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be by ocular test alone ; it is impossible to exclude consideration of the sound of words forming part or the whole of the mark. (Kerly's Law of Trade Mark and Trade Names, 11th Edn. , 1983, para 14. 21). (26) It is no answer to a charge of infringement as contrasted with a passing-off action - that the defendant's mark, whilst including the plaintiff's mark, includes other matters too. Still less is it an answer that by something outside that actual mark the defendant has distinguished his goods from those of the plaintiff- by adding his own name (Kerly, para 14. 22). But this principle is not absolute. It is also accepted that addition of his own name by the defendant is an element to be considered and may turn the scales in favour of the defendant. In the same para 14. 22 Kerly says: "but the use of the defendant's name as part of the mark complained of is an element to be considered and in some cases it has turned the scale in his favour (Jewsbury and Brown v. Andrew and Atkinson 13)" jewsbury case 13 was a case relating to infringement. (Of course, in para 14. 25 Kerly also refers to cases where addition of the defendant's name has been turned the scales.)"
(7) ON reading of the aforesaid two paragraphs I do not find any reason how this judgment gives any support to Mr. Sen's contention although Mr. Sen has placed reliance on this decision. Hence the second ground is not tenable.
(8) WITH regard to the third ground I feel that this ground is also not available to the defendant in view of the registration of the copyright of the word "vip" in favour of the plaintiff. In any event on a plain look the word "vip" appearing in both the cartons belonging to the plaintiff and the defendant respectively it cannot be said that there is no chance of any confusion amongst the ultimate consumers. However, since the plaintiff is the holder of the said mark both under the Trade and Merchandise Marks Act as well as under the Copyright Act the defendant is not, in any way, entitled to use the word "vip" in its products.
(9) WITH regard to the fourth ground Mr. Sen has drawn my attention to the particulars of the sale figures and advertisement figures given by the plaintiff in paragraphs 15 and 16 of the petition. Mr. Sarkar while replying
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on this ground has submitted that the word "vip" is a common mark used by the plaintiff in all their products so to say various products belonging to the plaintiffs are having different marks with the common word "vip". Mr. Sarkar has submitted different marks are being been used to identify different products belonging to the plaintiff. At the same time various products belonging to the plaintiff are made known to the customers by user of the common word "vip" so that the ultimate consumers may know that although various marks are used in respect of various products those belong to the same group and/or same manufacturer having a common word "vip". I find substance in Mr. Sarkar's contention with regard thereto and hence I reject the contention of Mr. Sen also on this scope. (10) IN the result the application succeeds. The ad interim order of injunction passed on October, 20, 1999 is confirmed and is made absolute. The said ad interim order would continue till the disposal of the suit. However, since the defendant is before me hearing of the suit is expedited. Cross order for discovery within four weeks thereafter. Inspection forthwith. The parties will be at liberty to apply for early hearing of the suit as and when the same is made ready. GA No. 4498 of 1999 is disposed of accordingly without any order as to costs.