Back
High Court of Judicature at Bombay
THE HONOURABLE MR. JUSTICE R.Y. GANOO
Arviva Industries (India) Ltd.
Versus
Vikas M. Tulsian & Others
NOTICE OF MOTION NO. 4378 OF 2009 IN SUIT NO. 3289 OF 2009
Decided on : 12-07-2010
In Court’s view, once the Court comes to the conclusion that the mark used by the defendants is deceptively similar as that of the plaintiffs, the prima facie case for infringement of the trade mark is made out by the plaintiffs. Similarly, prima facie case for passing off of the plaintiffs mark is made out. Merely because in a particular year the plaintiffs have not been able to sell their goods would not take away the protection.
For the reasons mentioned above, Court holds that the defendants mark VIVACITY is deceptively similar as to the mark of the plaintiffs VIVA. The activity on part of the defendants in selling the goods with mark VIVACITY has the effect of violating the trade mark of the plaintiffs. It has the effect of passing off the defendants goods thereby violating the rights of the plaintiffs and to that extent, the plaintiffs are entitled to get injunction in terms of prayer Clauses (a) and (b).
So far as prayer Clause (c) is concerned, once it is observed that the product of the defendants with the mark VIVACITY is in violation of the rights secured by the plaintiffs under the Trade Marks Act, 1999, a relief in the nature of injunction in terms of prayer Clause (c) is required to be granted otherwise, the defendants would continue to advertise their products on the website www.vivacity.co.in and it would lead to confusion in the mind of a common man. With these observations, the injunction in terms of prayer Clause (c) is required to be granted.
The Plaintiffs have instituted this Suit to seek an order of injunction on the ground that the Defendants are violating their trade mark VIVA by selling readymade garments with marks VIVACITY, VIVZ including its variants viz. VIVZ GURLZ, VIVZ 79 and VIVZ GALZ. It is also the case of the Plaintiffs that on account of use of these marks, the Defendants are passing off their goods as that of the Plaintiffs which is in violation of the right of the Plaintiffs qua their mark VIVA. The Plaintiffs have prayed for damages in the sum of Rs.50,000/-. The Plaintiffs have also prayed for delivery of the goods and other articles manufactured by the Defendants bearing impugned mark VIVACITY and VIVZ for destruction.
2. For the sake of convenience, the mark VIVACITY can be referred to as VIVACITY and other marks viz. VIVZ, VIVZ GURLZ, VIVZ 79, VIVZ GALZ can be referred to as other marks. According to the Plaintiffs, the Defendants are advertising their products on a website www.vivacity.co.in and that is in violation of the trade mark of the Plaintiffs VIVA.
3. Keeping in view the aforesaid frame of the Suit, the Plaintiffs have applied for appropriate interim reliefs and prayer clause (a) of the Motion pertains to relief so as to protect the Registered trade mark of the Plaintiffs viz. VIVA. Relief in terms of prayer clause (b) relates to passing off action.
According to the Plaintiffs, the Defendants are advertising their products on a website www.vivacity.co.in. The Plaintiffs claim that this action is in violation of the Plaintiffs’ Trade mark VIVA. By prayer clause (c), the Plaintiffs want that the Defendants should not advertise their products on the website www.vivacity.co.in or any domain name and website address bearing the trade mark VIVA of the Plaintiffs.
4. Parties have completed the pleadings and I have heard learned Counsels on both sides.
5. It is the case of the Plaintiffs that the trade mark VIVA was held by P.N. Amarnani as M/s. Amar Brothers, since 1983 in class 24 “Textile piece goods” under No.409055. The registration in regard to the said mark came to be assigned in February 1989 in favour of the Plaintiffs and since then, the Plaintiffs are holding the said trade mark and there is no dispute about it. It is also the case of the Plaintiffs that the Plaintiffs registered their trade mark VIVA in stylized form under class 25 for clothing and wearing apparels under No. 563521 and the Plaintiffs are in the market right from 1988.
6. It is the case of the Plaintiffs that in February 2009 they noticed that an advertisement released by the Defendants for intended registration of the mark VIVACITY ITS HAPPENING. The Plaintiffs lodged their opposition by letter dated 3rd February 2009. The Plaintiffs have learnt that the Defendants have also applied for registration of the other marks viz. VIVZ etc. i.e. other marks, however, there is no registration granted in favour of the Defendants as of today.
7. The application for registration of the mark VIVACITY ITS HAPPENING came to be filed by Defendant No.1 and the user of the said mark is being claimed by Defendant No.1 from 1st March 2005. The Plaintiffs claim that in the month of December 2008, they came across an advertisement published by a shop by name Adams Retailing, Bandra, Mumbai as regards the product “VIVACITY”. The Plaintiffs lodged the protest with the said shop. However, no reply is received from the said shop. According to the Plaintiffs, they came to know about the impugned activities of the Defendants in the year 2009 and i.e. how the Suit came to be filed in December 2009.
8. The Plaintiffs have in support of their claim that they are in the market since 1983 for the fabrics and from 1988 for the readymade garments with the mark VIVA have relied upon their invoices. They have also given their yearwise figures of turn-over to show that they have substantial share in market. In substance, the Plaintiffs want to show that after acquisition of a right in th
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
