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1997 Supreme(Bom) 573
BOMBAY HIGH COURT
S.H. Kapadia, J.
CLUETT PEABODY & CO. INC. - PETITIONER
v.
ARROW APPARALS - RESPONDENT
Notice of Motion No.1298 of 1994 in Suit No.1763 of 1994,
Decided on: October 24, 1997
Sh. Virag V. Tulzapurkar, Sh. Ravi Kadam i/b M/s. Gajria & Co. Advocates, for the Petitioner.
Sh. Jank Dwarkadas with V.F. Shah, C.D. & R. B. Barot i/b M/s. Dhruve Liladhar & Co. Advocates, for the Respondent.
Delay in filing a suit for infringement of a trade mark may disentitle the plaintiff to an injunction, particularly where the defendants have made out a strong prima facie case in their favour and the balance of convenience is in their favour.
Headnote:
ARROW - TRADE MARK - SUIT FOR INFRINGEMENT AND PASSING OFF - INTERIM INJUNCTION - DELAY IN FILING SUIT - BALANCE OF CONVENIENCE - ACCOUNT OF PROFITS.
Fact of the Case:
Plaintiffs, a corporation organized under the laws of the State of Delaware, USA, carrying on a international well known business of goods and marketing readymade garments, wearing apparels, and a company incorporated under the Company Act and having its registered office at Ahmedabad, Gujarat, filed a suit to restrain infringement of plaintiff No.1 registered mark "ARROW" consisting of word mark "ARROW" and also the devise of "ARROW" in relation to readymade garments. The suit was also to restrain the defendant from in any manner using in relation to readymade garments the infringed mark "ARROW" and of devise of ARROW or any mark deceptively similar thereto or deceptively similar to any marks mentioned in Exhibit A to the plaint so as to pass off or enable others to pass off the goods of the defendants as and for the goods of the plaintiffs. The name of the defendant Company was ARROW APPARLES. Plaintiff No.1 is a Corporation organised under the laws of the State of Delaware, USA carrying on a international well known business of goods and marketing readymade garments, wearing apparels. Plaintiff No.2 is a company in corporated under the Company Act and having its registered office at Ahmedabad, Gujarat. Plaintiff No.2 manufactures and markets readymade garments and other articles of clothing. Plaintiff No.2 is the Licensed user of the trade mark of the plaintiff No.1 which are used by the second plaintiff in connection with goods manufactured by the plaintiff No.2 under supervision and control and specifications prescribed by plaintiff No.1. Defendant No.1 is a Firm, carrying on business of manufacturing and dealing in readymade garments, more particularly shirts of which Firm, defendant Nos. 2 and 3 are the Partners.
Finding of the Court:
The Court found that the defendants had made out a strong prima facie case in their favour and that they were also in a position to pay damages in the event of their loosing the above matter. The Court also found that the balance of convenience was in favour of the defendants. The Court held that the defendants were entitled to rely upon their own market survey and it was a case of the defendants that after survey, they found that there was no such user of the mark ARROW in India and accordingly, the mark was adopted in 1985 by the defendants. If the user of the mark is after 1985 by the plaintiffs then it is irrelevant because it cannot displace the rights of the defendants as proprietors of the trade mark.
Issues: Whether the plaintiffs were entitled to an injunction restraining the defendants from using the mark ARROW.
Ratio Decidendi: The Court held that the plaintiffs were not entitled to an injunction restraining the defendants from using the mark ARROW. The Court found that the defendants had made out a strong prima facie case in their favour and that they were also in a position to pay damages in the event of their loosing the above matter. The Court also found that the balance of convenience was in favour of the defendants. The Court held that the defendants were entitled to rely upon their own market survey and it was a case of the defendants that after survey, they found that there was no such user of the mark ARROW in India and accordingly, the mark was adopted in 1985 by the defendants. If the user of the mark is after 1985 by the plaintiffs then it is irrelevant because it cannot displace the rights of the defendants as proprietors of the trade mark.
Final Decision: The Court rejected the plaintiffs' prayer for an injunction. However, the Court directed the defendants to maintain an account of profits every year and to forward the Account of Profits every year after the end of the Accounting year to the plaintiffs.
S.H. Kapadia, J. - The above suit is filed by the plaintiffs to restrain infringement of plaintiff No.1 registered mark "ARROW" consisting of word mark "ARROW" and also the devise of "ARROW" in relation to readymade garments. The suit is also to restrain the defendant herein from in any manner using in relation to readymade garments the infringed mark "ARROW" and of devise of ARROW or any mark deceptively similar thereto or deceptively similar to any marks mentioned in Exhibit A to the plaint so as to pass off or enable others to pass off the goods of the defendants as and for the goods of the plaintiffs. The above suit is also filed by the plaintiffs to restrain the defendant from using the word "ARROW" as a part of the defendant trade name and style of any part thereof so as to pass off or enable others to pass off the defendants goods and/or business as and for the goods and/or business of the plaintiffs. The name of the defendant Company is ARROW APPARLES.
2. Plaintiff No.1 is a Corporation organised under the laws of the State of Delaware, USA carrying on a international well known business of goods and marketing ready-made garments, wearing apparels. Plaintiff No.2 is a company in corporated under the Company Act and having its registered office at Ahmedabad, Gujarat. Plaintiff No.2 manufactures and markets readymade garments and other articles of clothing. Plaintiff No.2 is the Licensed user of the trade mark of the plaintiff No.1 which are used by the second plaintiff in connection with goods manufactured by the plaintiff No.2 under supervision and control and specifications prescribed by plaintiff No.1.
3. Defendant No.1 is a Firm, carrying on business of manufacturing and dealing in readymade garments, more particularly shirts of which Firm, defendant Nos. 2 and 3 are the Partners.
4. It is a case of the plaintiff No.1 Corporation that the Corporation has been manufacturing and marketing readymade garments, inter alia, under the trade mark name "ARROW" and/or devise of ARROW exclusively or in combination with other trade marks, a list whereof has been given at Exhibit A to the Plaint. The trade mark "ARROW" and/or the devise ARROW was adopted by the first plaintiff Corporation in mid eighties. The ARROW COMPANY, a Division of the first plaintiff Corporation began operations in mid eighteen hundreds in a room/workshop in New York. Plaintiff has placed reliance on a brochure containing details of the ARROW COMPANY and its history of fashion. Exhibit B also gives particulars of ARROW APPARELS, licencees in countries other than in India. The trade mark ARROW and/or the devise and/or marks containing the same is an essential part thereof and has been registered in large number of countries of the World, including India as per particulars given in Exhibit C to the Plaint. In India, it has been registered during the period 1955-60 and it has been since renewed every seven years which fact is not in dispute. According to the plaintiff No.1 the said trade marks stood in the name of M/s. Cluett Peabody & Co. on 15th January, 1986, the Company merged with best Point Apparel Inc. to form a corporation entitled "Cluett Peabody & Co. Inc". The certificate obtained from the office of the Secretary of State confirmed merger. The said certificate was filed with the Registrar of Trade Marks along with the application to record the merger. This application was filed on 2nd August, 1989 with the Registrar of Trade Marks in India. The said trade marks were duly and validly assigned vide Deed of Assignment dated 20th November, 1990 in favour of the second plaintiffs. The said assignment alongwith the recordal of the assignment was also filed with the Registrar of Trade Marks in India on 20th November, 1990. The Registrar allowed all the applications pending before him and he brought the plaintiffs on record as the Proprietors of the plaintiff (See letter dated 16th March, 1994 communicating the recordal which is Exhibit D to the
