IN THE HIGH COURT OF JUDICATURE AT BOMBAY
S.C. GUPTE, J.
Archer Trading House Pvt. Ltd. & Another - Plaintiffs
Versus
Eurobond Industries Limited - Defendant
Notice of Motion (L) No. 2584 of 2014 in Suit No. 1017 of 2014
Decided On : 15-06-2015
Trademark Infringement - EUROBOND - Section 34 of the Trade Marks Act, 1999 - The court discussed the legal provisions of Section 34 of the Trade Marks Act, 1999, which deals with saving for vested rights of a prior user. The court analyzed the prior use of the trademark EUROBOND by Gala and Gala and the subsequent assignment of the mark to the Defendant. It also considered the Defendant's challenge to the registration of the Plaintiffs on the ground of non-use under Section 47 of the Act. The court found that there was no case for declining the Plaintiffs' application for injunction on the ground of non-user of the registered trade mark.
Fact of the Case:
The Plaintiffs sought interlocutory injunction against the Defendant in a trademark infringement and passing off suit. The Plaintiffs claimed to be the registered proprietor of the EUROBOND mark and alleged that the Defendant's use of the mark constituted infringement and passing off of their goods.
Finding of the Court:
The court found that the Defendant's use of the trademark EUROBOND was under a licence from Plaintiff No.2 and not as the proprietor of the mark. The court also held that there was no case for declining the Plaintiffs' application for injunction on the ground of non-user of the registered trade mark.
Issues: The critical issues included whether Gala and Gala were the proprietor of the mark EUROBOND, whether the assignment of the trademark EUROBOND by Gala and Gala to the Defendant was genuine, whether the Defendant had a defence of honest and concurrent user, and whether the Defendant had a good case for rectification of the Plaintiffs' registration.
Ratio Decidendi: The court analyzed the legal provisions of Section 34 and Section 47 of the Trade Marks Act, 1999, and considered the prior use of the trademark EUROBOND by Gala and Gala, the subsequent assignment of the mark to the Defendant, and the Defendant's challenge to the registration of the Plaintiffs on the ground of non-use.
Final Decision: The court stayed the suit pending the hearing and final disposal of the Defendant's application for rectification. The Defendant was restrained from using the EUROBOND trademark and device, and the court granted the Defendant three months to change its corporate name and trading style and dispose of its existing stock of goods bearing the trade mark EUROBOND.
1. This is a Motion for interlocutory reliefs in a trademark infringement and passing off suit.
2. The Plaintiffs' case may be briefly stated as follows:
In or around 2002, Plaintiff No.2, then a private limited company, conceived of the marks “EURO”, “EUROBOND” and EURO device of a globe depicted within the letter 'U'. On 10 January 2003, it applied for, and in due course obtained, registration of the EURO Device with the word “EUROBOND” written below the device as a trade mark in Class 6 in respect of aluminum composite panels. The registration of the mark has been subsequently renewed and is currently valid and subsisting. Over the years, Plaintiff No.2 has also registered various other EURO and EURO composite or combination marks such as Euro Standard (Label), Euro (Label), U Euro (label), Euro Whiteware (label), Euro Sanitaryware (Label), Euro Tileobond, etc. in various classes such as Class 6, 11, 19 and 35. The EURO Device forming part of many of these trademarks also appears on the letterheads and visiting cards as also packaging materials of Plaintiff No.2 since 2003. Plaintiff No.2 claims to have acquired tremendous reputation and goodwill in the EURO marks by reason of extensive turnover and advertisement. The turnover of Plaintiff No.2 for the year 2013-2014 is claimed to be to the tune of Rs.7,662.85 lakhs. Plaintiff No.2 also claims to have entered into a trademark user licence agreement dated 31 March 2007 with one Neelam Metals, who has used the mark continuously since 2007 under the licence agreement for aluminum composite panels. It is the case of the Plaintiffs that on 29 July 2004, Plaintiff No.2 gave its 'no objection' to four individuals, who were part of the former's group, namely, Suresh D. Gala, Dhiraj D. Gala, Chintan D. Gala and Hiren R. Nandu, to incorporate a new company using the word EUROBOND as part of its trading name. The Defendant Company was, accordingly, incorporated by Suresh D. Gala and others in the name of “Eurobond Industries Private Limited”. A formal agreement dated 21 September 2006 was made between Plaintiff No.2 as owner of the mark “EURO” and the Defendant granting licence to use the word EURO as part of its corporate name, trading style and in respect of its products solely in connection with the Defendant's trading activities relating to manufacturing of Aluminum Panel Sheets on the terms and conditions contained therein. (Plaintiff No.2 has also entered into similar name licence agreements with various other group companies.) The agreement inter alia provides that the Defendant shall use the name EURO and the logo forming part of the EURO Device only as approved by Plaintiff No.2. The agreement further provides that Plaintiff No.2 will be entitled to terminate the agreement forthwith upon there being a change in the shareholding or ownership pattern of the Defendant or in the voting powers of shares or other changes in the beneficial or legal ownership of the Defendant, which, in the sole and unfettered discretion of Plaintiff No.2 or its promoters, is prejudicial to the interest of Plaintiff No.2 or its proprietors. It is the Plaintiffs' case that in view of the change in the pattern of shareholding of the Defendant, Plaintiff No.2, by its letter dated 23 December 2013, terminated the name licence agreement dated 21 September 2006 with immediate effect and called upon the Defendant to discontinue the use of the corporate logo in any form and also to discontinue the use of the name “EURO” in any form, including as part of its corporate name, trading style, trading name, or upon its products and services, within sixty days. Plaintiff No.2 also issued through its attorneys a cease and desist notice to the Defendant with respect to its registered trademark “EUROBOND” (label). By its letter dated 29 January 2014, the Defendant in reply sought time till 30 June 2014 to exhaust their stock, packing material, stationery, etc. bearing the trademark and trade name EUROBOND and to
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