Back
BOMBAY HIGH COURT
B.N. Srikrishna, J.
PODDAR TYRES LTD. - PLAINTIFF
v.
BEDROCK SALES CORPORATION LTD. AND ANOTHER - DEFENDANTS
Notice of Motion No.264 of 1992 in Suit No.416 of 1992,
Decided on: July 21, 1992
TRADEMARK - INFRINGEMENT - PASSING OFF - INTERIM INJUNCTION - COMPANY NAME - SIMILARITY - LIKELIHOOD OF CONFUSION - BONA FIDE USE - EXCEPTION - SECTION 34 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - BALANCE OF CONVENIENCE - DELAY - ACQUIESCENCE - PERMITTED USER - RECTIFICATION APPLICATION - JURISDICTION - COMPANIES ACT, 1956 - SECTION 433 - PARTNERSHIP - LIFTING OF VEIL OF INCORPORATION - REGISTERED PROPRIETOR - EXCLUSIVE RIGHT - ASSIGNMENT - VALIDITY - SECTION 28 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
Plaintiffs, a company incorporated under the Companies Act, carrying on inter alia, business of manufacture of rubber tubes and tyres, filed a suit against the defendants for infringement of their registered trademarks containing the word "Bedrock" and passing off the defendants' business as that of the plaintiffs by the use of the word "Bedrock" as part of the 1st defendant's corporate name. The plaintiffs claimed to be using the trademark "Bedrock" since 1964, which is registered since 1973. The defendants denied infringement or passing off and contended that the plaintiffs had no title to the trademark "Bedrock", as the assignment made in their favor was invalid. They also contended that the plaintiffs were a glorified partnership or a mirror image of a partnership, and therefore, the veil of incorporation should be lifted, and the plaintiffs could not assert any exclusive proprietary right in the registered trademark.
Finding of the Court:
The Court held that the adoption of the word "Bedrock" as a part of the defendants' corporate name was an infringement of the plaintiffs' registered trademarks and amounted to passing off of the defendants' business as that of the plaintiffs. The Court further held that the defendants could not avail of the exception under Section 34 of the Trade and Merchandise Marks Act, 1958, as they had not adopted the word "Bedrock" bona fide as a part of their name, but merely to cash in on the reputation and goodwill attached to the registered trademarks of the plaintiffs. The Court also held that the pendency of the rectification application did not prevent the plaintiffs from exercising their statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon. The Court rejected the defendants' contention that the plaintiffs were a glorified partnership and that the veil of incorporation should be lifted, and held that the plaintiffs were the registered proprietors of the trademarks and had exclusive right to use the same.
Issues: 1. Whether the defendants' adoption of the word "Bedrock" as a part of their corporate name infringed the plaintiffs' registered trademarks? 2. Whether the defendants' actions amounted to passing off of their business as that of the plaintiffs? 3. Whether the defendants could avail of the exception under Section 34 of the Trade and Merchandise Marks Act, 1958? 4. Whether the pendency of the rectification application prevented the plaintiffs from exercising their statutory rights under the Trade Marks Act or from seeking interim reliefs? 5. Whether the plaintiffs were a glorified partnership and the veil of incorporation should be lifted?
Ratio Decidendi: 1. The Court held that the defendants' adoption of the word "Bedrock" as a part of their corporate name was an infringement of the plaintiffs' registered trademarks and amounted to passing off of the defendants' business as that of the plaintiffs, as there was a likelihood of confusion in the minds of the public that the goods emanating from the defendants were "Bedrock" goods, and that the defendants' business was somehow intimately connected with the plaintiffs'. 2. The Court held that the defendants could not avail of the exception under Section 34 of the Trade and Merchandise Marks Act, 1958, as they had not adopted the word "Bedrock" bona fide as a part of their name, but merely to cash in on the reputation and goodwill attached to the registered trademarks of the plaintiffs. 3. The Court held that the pendency of the rectification application did not prevent the plaintiffs from exercising their statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon. 4. The Court rejected the defendants' contention that the plaintiffs were a glorified partnership and that the veil of incorporation should be lifted, and held that the plaintiffs were the registered proprietors of the trademarks and had exclusive right to use the same.
Final Decision: The Court granted an injunction restraining the defendants from infringing the plaintiffs' registered trademarks and passing off their business as that of the plaintiffs by the use of the word "Bedrock" as part of their corporate name. The injunction was suspended for a period of 8 weeks to enable the defendants to take steps to have their corporate name changed by adopting appropriate legal proceedings.
B. N. Srikirshna, J. - This notice of motion has been taken out by the plaintiffs for the following Reliefs:
"(a) that, pending the hearing and final disposal of the suit, the defendants No.1, by themselves, their servants and agents, be restrained by an order and injunction of this Hon'ble Court;
(i) from infringing the plaintiffs' registered trade marks (Ex. 'A' to the plaint) and/or passing off the defendant No.1's business as and for the business of the plaintiffs by the use of the word "Bedrock" as part of the 1st defendant's corporate name; and
(ii) from infringing and/or passing of these 1st defendants' goods as and for the goods of the plaintiffs by the use of the word "Bedrock" in connection with or in respect of goods manufactured by them;
(b) that, pending the hearing and final disposal of the suit, the defendants No.1 by themselves, their servants and agents be ordered and directed to deliver up for destruction all their letter heads, invoices, price lists, cash memos, brochures, advertisements, etc. articles and effects bearing the impugned word "Bedrock"
2. This notice of motion illustrates the homely truth that greater the consanguinity between parties, more bitter is the litigation between them, fraternal feuds being the fiercest.
3. The plaintiffs are a company incorporated under the Companies Act, and carry on inter alia, business of manufacture of rubber tubes and tyres. The plaintiff-company was originally incorporated as a private limited company on 13th February, 1981, but became a "deemed public company", within the meaning of Section 43-A of the Companies Act, in or about June, 1988, as a result of increase in turnover. The plaintiffs claim to be leading manufacturers of rubber tyres and tubes with a share of 10% of the Indian market in those products. The plaintiffs claim that they have a monthly turnover of about Rs. 3 crores and a very valuable goodwill in their trade marks, containing the word "Bedrock" and other combinations of the said name as also a distinctive logo. The plaintiffs claim to be using the trade mark "Bedrock" since 1964, which is registered since 1973.
4. At Exhibit 'A' to the plaint, the plaintiffs have enclosed a statement of their Registered/Unregistered Trade Marks and the class in respect of which their trade marks have been registered. A perusal of this statement would show that the word "Bedrock" forms prominent part of the registered trade marks except two, which are logos with the letter 'B' in the centre. Seven out of the ten registered Trade Marks are in respect of Class 12 (Rubber Tyres and Tubes for land vehicles, and accessories, spare parts for repairs), two in respect of Class 17) (Plastic goods) and one in respect of Class 1 (Adhesive for Rubber repairing composition for Tyres and Tubes for land vehicles).
5. The trade mark "Bedrock" was originally owned by a partnership firm, known as "Bedrock Tyres and Rubber Company". On or about 16th July, 1979, private limited company, known as "Bedrock Tyre and Rubber Co. Pvt. Ltd.", was admitted as a partner of the said firm. Thereafter, all the other partner retired, leaving the ownership of all assets, including the trade marks to Bedrock Tyre and Rubber Co. Pvt. Ltd. The plaintiffs have used all the said trade marks from 1983 pursuant to a permitted user agreement between the plaintiffs and Bedrock Tyre and Rubber Co. Pvt. Ltd. Bedrock Tyre and Rubber Co. Pvt. Ltd. were subsequently re-named as Bedrock Ltd., who are the second defendants in the suit.
6. Pursuant to a Deed of Assignment dated 8th March, 1986, as amended by the two Deeds of Corporation and Confirmation dated 31st December, 1986 and 23rd February, 1989, the plaintiffs became the proprietors of all the trade marks, which are indicated in the statement at Exhibit 'A' to the plaint, including the trade mark "Bedrock". The plaintiffs moved the Registrar of Trade Marks and had their name entered as proprietors of the trade marks. The plaintiffs are, thus, th
AI
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
