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2016 Supreme(Bom) 1468
IN THE HIGH COURT OF BOMBAY
S.C. Gupte, J.
Federal Brands Ltd. - Plaintiff
Versus
Levi Strauss India Pvt. Ltd. - Defendant
Notice of Motion No. 1634 of 2015 in Suit No. 509 of 2015
Decided On : 02-03-2016
For the Plaintiff :Aspi Chinoy, Senior Advocate, Mr. Venkatesh Dhond, Senior Advocate, Mr. Shyam Kapadia with Mr. Sanjay Udeshi and Mr. Darshan Ashar i/b. Sanjay Udeshi & Co.
For the Defendant :Dr. Veerendra Tulzapurkar, Senior Advocate, Mr. Vinod Bhagat, Ms. Gunjan Paharia, Mr. Punit Jani and Dhiren Karania I/b. G.S. Hegde & V.A. Bhagat, Advocates.
The central legal point established in the judgment is the distinctiveness and exclusivity of the mark 'LIVE-IN' in India, leading to the likelihood of confusion and deception, and the grant of a temporary injunction based on the balance of convenience and irreparable injury.
Headnote:
Trademark Infringement - Apparel - Trade Marks Act, 1999, Section 29(1) - The court analyzed the use of the mark 'LIVE IN' in connection with jeans and apparel, and discussed the interpretation of Section 29(1) of the Trade Marks Act, 1999. The court considered the subjective and objective tests for determining the use of a trade mark and examined the distinctiveness of the mark 'LIVE IN' in India. The judgment highlighted the plaintiff's substantial reputation and goodwill associated with the mark, and concluded that the defendant's use of 'LIVE IN' was likely to cause confusion and deception, leading to infringement and passing off of goods.
Fact of the Case:
The Plaintiff, a registered proprietor of the 'LIVE-IN' trade mark, alleged trademark infringement and passing off by the Defendant, who used the mark 'LIVE IN LEVI'S' on apparel. The Plaintiff claimed extensive sales, promotional expenses, and goodwill associated with the mark, while the Defendant argued that 'Live in' was generic and descriptive of clothing.
Finding of the Court:
The court found that the Plaintiff's mark 'LIVE-IN' had acquired distinctiveness in India and was exclusively associated with the Plaintiff's goods. It concluded that the Defendant's use of 'LIVE IN' was likely to cause confusion and deception, constituting infringement and passing off of goods.
Issues: The key issues involved the distinctiveness of the mark 'LIVE IN', the likelihood of confusion or deception, and the Defendant's claim of generic and descriptive use.
Ratio Decidendi: The court held that the Plaintiff's mark had acquired distinctiveness and goodwill, and the Defendant's use of 'LIVE IN' was likely to cause confusion and deception, leading to infringement and passing off of goods.
Final Decision: The court granted a temporary injunction restraining the Defendant from using the mark 'LIVE IN' in connection with their goods or promotion thereof, citing the balance of convenience and irreparable injury in favor of the Plaintiff.
S.C. Gupte, J.
This is a trademark infringement and passing off suit. The notice of motion seeks a temporary injunction in respect of use by the Defendant of the mark "LIVE IN" in respect of jeans, apparel and clothing.
2. It is the case of the Plaintiff that in 1992, Hybo-Hindustan, a partnership firm and a sister concern of the Plaintiff (which was formerly known as Micro tax India Ltd.), conceived and adopted the mark "LIVE-IN" in respect of jeans, apparel and clothing. Ever since 1992, Hybo-Hindustan has been using the mark on jeans inter alia through the Plaintiff as a permitted user of the former.
It is submitted that Hybo-Hindustan has continued to exercise control and supervision over the Plaintiff's use of the mark and that the mark "LIVE-IN" has been continuously and openly used by the Plaintiff since then. It is claimed that the Plaintiff's products under the particular trade mark are presently sold through a distribution network of 2600 multi brand outlets and 30 distributors. In 1998, the Plaintiff introduced two lines of clothing to capitalise on the goodwill accumulated by the "LIVE-IN" brand, namely, "LIVE-IN LITES" and "LIVE-IN COMFIES". On 31 December 1998, partners of Hybo-Hindustan applied for registration of the trade mark "LIVE-IN". On 22 October 2005, the same was registered in class 25 in respect of ready-made garments, hosiery, jeans and articles of clothing, the registration being effective from 28 July 2003. Subsequently, the marks "LIVE-IN LITES" and "LIVE-IN COMFIES" along with other marks, such as "LIVE-IN KHAKIS", "LIVE-IN CHINOS" and "LIVE-IN UNRUFFLED", were also registered by the Plaintiff. By a Deed of Assignment, Hybo-Hindustan and its partners assigned the marks "LIVE-IN", "LIVE-IN COMFIES" and "LIVE-IN LITES" to the Plaintiff. That is how the Plaintiff came to be the proprietor of the registered trade marks, which are collectively referred to as the "LIVE-IN" trade marks. The Plaintiff claims to have sold goods and merchandise under the "LIVE-IN" marks worth more than Rs. 1000 crores during the years 1992-93 and 2013-14. In the year 2013-14 itself, the Plaintiff claims to have sold over 1.1 million pieces/jeans under its "LIVE-IN" marks. The Plaintiff claims to have spent a sum of over Rs. 41 crores on advertisement expenses and brand promotion in respect of the "LIVE-IN" marks held by it. The sales figures as well as the advertisement and promotional expenses have been duly certified by the auditors of the Plaintiff. The sales figures together with the auditors' certificates are submitted with the plaint. It is the grievance of the Plaintiff that sometime in or about September/October 2014, the Plaintiff became aware of the Defendant's use of the identical mark, namely, "LIVE IN", on its products and advertising as "LIVE IN LEVI'S". Before, however, the Plaintiff could take any action, it is submitted, the Defendant's campaign was stopped in November 2014. It is the Plaintiff's grievance that in or about February 2015, the Defendant once again commenced its marketing campaign using the mark "LIVE IN LEVI'S". In February - March 2015, various suppliers, distributors and retailers of the Plaintiff are claimed to have written to the Plaintiff about the confusion in the market and the perception gathered in the market about the Plaintiff's business having been taken over by the Defendant. It is the Plaintiff's grievance that the Defendant, who was making losses in the year 2013 and 2014, has now piggybacked on the Plaintiff's name and reputation and as a result, has now started making profits. It is submitted that the Defendant has not only infringed the registered trade mark of the Plaintiff but is also guilty of passing off its goods as the goods of the Plaintiff. In the premises, the present suit is filed by the Plaintiff complaining of infringement and passing off.
3. On the other hand, it is the case of the Defendant that the words "Live in" or "Lived in" are generic and descriptive o
