The main legal point established in the judgment is the requirement for a plaintiff to establish a prima facie case for passing off, including evidence of continuous usage and distinctive character of the trade slogan, in order to claim injunctive relief.

Headnote:
Trade Mark - Infringement - Trade Marks Act, 1999 - Section 2(1)(w), Section 27 - The court held that the trade slogan 'i AM WHAT I AM' had not been registered as a trade mark and therefore the plaintiff could not claim injunctive relief. However, the court found that the plaintiff had used the slogan prior to the defendants, acquiring reputation and goodwill, and was entitled to temporary injunction. The court also discussed the distinction between passing off and infringement actions, and the requirements for establishing a prima facie case for passing off.
Fact of the Case:

The plaintiff sought injunction against the defendants for using the trade slogan 'i AM WHAT I AM', claiming it as their distinctive style and design since 1998. The defendants contended that the slogan was a common generic English phrase and the plaintiff had not established its distinctive character or goodwill.
Finding of the Court:

The court found that the plaintiff had used the slogan prior to the defendants, acquiring reputation and goodwill, and was entitled to temporary injunction. The court also held that the plaintiff had not established a prima facie case for passing off, as there was no evidence of the slogan's continuous usage and distinctive character.
Issues: The issues revolved around whether the trade slogan 'i AM WHAT I AM' had acquired a distinctive character and goodwill, and whether the defendants' use of the slogan was likely to cause confusion in the market.
Ratio Decidendi: The court emphasized the need for the plaintiff to establish a prima facie case for passing off, including evidence of continuous usage and distinctive character of the trade slogan. It also discussed the distinction between passing off and infringement actions, and the requirements for granting temporary injunction.
Final Decision: The appeal was allowed, the order under challenge was set aside, and the trial court was directed to dispose of the case early. The observations made in the judgment were confined to the disposal of the application for temporary injunction and would not affect the disposal of the matter on merits by the trial court.

B. S. PATIL, J.

( 1 ) THE controversy involved in this appeal pertains to the use of the trade slogan "i AM WHAT I am". The Appellants herein are aggrieved by the grant of temporary injunction restraining them from using the Logo "i AM WHAT I AM" along with their trade mark.

( 2 ) THE Appellants herein are defendants in the suit, O. S. No. 16861/2005 filed by the respondent/plaintiff seeking permanent injunction against them restraining them from using on their products the logo/trade slogan "i AM WHAT I AM" and for payment of damages in a sum of Rs. 15,000/-and for rendition of accounts.

( 3 ) IT is the case of the plaintiff that the trade slogan "i AM WHAT I AM" is its distinctive style and design atleast since 1998, used on its Garments which is alleged to have been stolen/pirated by the defendants, thus infringing their proprietary rights including intellectual property. The plaintiff further asserted that they were the first to use the logo "i AM WHAT I AM" and therefore the plaintiff alone can claim rights over the said slogan as a Trade Mark.

( 4 ) THE defendants contended that:

(1) As per Section 2 (1) (w) of the Trade Marks Act, 1999, the expression, "registered Trade mark" means a Trade Mark which is actually on the register of Trade Marks maintained by the government of India and which is in force. Admittedly, the slogan, "i AM WHAT I AM" not being a registered Trade Mark, the plaintiff was not entitled for any relief. They further contended that the plaintiff has filed applications to register the logo "i AM WHAT I AM" only on 18th May 2005 under the Trade Marks Act, 1999 which was still to be examined. Therefore, no infringement action can be initiated on the basis of the alleged violation of an unregistered trade mark.

(2) They further contended that no documents were produced to show the user of the logo "i AM what I AM" since the year 1998. That the slogan "i AM WHAT I AM" was only a common generic English phrase and the proprietor of such slogan, without any design or device has to establish that by extensive and continuous use, the slogan had become distinctive of the products of the plaintiff, so that the phrase having lost its primary meaning acquired a secondary meaning in the market in relation to such products manufactured by the plaintiff, acquiring reputation and goodwill. It is their further case that no extensive, commercial efforts were put by the plaintiffs to develop the phrase "i AM WHAT I AM", so as to acquire a secondary meaning, The same is neither pleaded nor evidenced by production of any materials, is their contention. On the contrary, the defendants have resorted to extensive use of the trade slogan, "i AM WHAT I AM" and have spent crores of rupees on thee advertisement and have already filed application for registration of the trade mark in Japan, Canada, USA, China during the early part of 2005 and the plaintiff, with a malafide intention has come forward to claim proprietary rights over the trade slogan is their assertion in the written statement.

( 5 ) THE Court below, upon consideration of the pleadings and the documents produced, has held that the trade mark of the plaintiff, under which the plaintiff carried on his business was "gomzi" and not "i AM WHAT I AM". It is further recorded that the plaintiff did not file any application to get the slogan "i AM WHAT I AM" registered as a trade mark until May 2005. The court has primafacie found that "i AM WHAT I AM" cannot be construed as a logo or trade mark of the plaintiff.

( 6 ) HAVING held that as per Sub-section 1 of Section 27 of the Trade Marks Act, 1999 no person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark and that the plaintiff not having got the slogan "i AM WHAT I am" registered as a trade mark, could not claim injunctive relief, the court has, however, distinguished the claim for prima-facie title from that of a prima facie case for the

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Judicial Analysis

2006 Supreme(Kar) 469

The main legal point established in the judgment is the requirement for a plaintiff to establish a prima facie case for passing off, including evidence of continuous usage and distinctive character of the trade slogan, in order to claim injunctive relief.

Cases Referred (2)

Judicial Analysis