Back
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
S.J. Kathawalla, J.
Kantilal Premji Maru - Appellant
Versus
Madan Kumar - Respondent
Notice of Motion (L) No. 666 of 2017 in Commercial Suit (L) No. 580 of 2017
Decided On : 04-05-2018
Registration under Bombay Shops & Establishment Act, 1948 - Trade Mark Act, 1999 – Sections 11, 17, 31, 28, 29, 29(5), 30(2)(e), 28(3), 31(1), 28(1), 124(1)(b), 124(5), 124(1), 31(2), 9(1), 32, 124, 9, 17, 11, 17(2), 17(2)(b) - Infringement of Trade mark - Plaintiff submits that in or around Plaintiff had discovered that its mark Classic Steels was being pirated in market - Therefore Plaintiff issued a public notice calling upon members at large to recognise Plaintiffs original products from counterfeit products sold in market by others - Plaintiff also discovered that Defendant had fraudulently applied for and secured registration of its mark 5 Classic Care which was identical and/or deceptively similar to Plaintiffs registered Trade Mark in respect of identical goods and services - It is submitted that Defendant had in fact also claimed a false date of user in its application - In application for registration of impugned mark Defendant has claimed user from - Learned Counsel for Plaintiffs submits that a comparison of marks as a whole make it clear that Defendant has copied prominent and/or distinctive and/or essential feature of Plaintiffs registered marks and label – Held, Court of view that Defendant has copied essential feature of Plaintiffs mark and label - Defendant has done so to encash upon goodwill and reputation of Plaintiff and its mark - Plaintiff has had substantial sales under its marks and sufficient goodwill and reputation has accrued to them - In circumstances Court satisfied that a case for passing off is also made out - Then Court turn to question of delay and acquiescence - Finally that brings us to question of balance of convenience - Even on balance of convenience Court are of view that Learned Single Judge is right - Damage caused to goodwill of proprietor of a trade mark may be intangible and not computable in terms of money but has long term effect of devaluing trade mark itself which is property of the registered proprietor - Another person who consciously and without taking necessary steps to assure himself of existence of such mark uses it and invest money therein does not obviously have balance of convenience in his favour Court of opinion that Notice of Motion is liable to be made absolute in terms of prayer clauses a(ii) and a(iii) which read as under - Above Notice of Motion is accordingly disposed off.
JUDGMENT
S.J. Kathawalla, J. - The Plaintiff has filed the present suit seeking reliefs in respect of :
i) infringement of the Plaintiff''s registered trademark "Classic Steels", bearing No. 1467897 in class 21 of the Trademarks Act, 1999 in respect of stainless utensils;
ii) infringement of the Plaintiff''s copyright in its distinctive "Classic Steels" label; and
iii) passing off by the Defendant of its products as and for that of the Plaintiff.
2. By an order dated 30th January, 2018 leave to the Plaintiff was granted under clause XIV of the Letters Patent Act to combine the cause of action for passing off with that of infringement of trademark and infringement of copyright.
3. By consent, the Notice of Motion is heard finally.
4. The Plaintiff''s case in the Plaint is as follows :-
a) the Plaintiff is the registered proprietor of the distinctive mark "Classic Steels" bearing number 1467897 in class 21 of trademarks Act 1999 in respect of stainless utensils with effect from 7th July, 2006 (Exhibit A page 22 of the Plaint).
b) The Plaintiff had incorporated the trading name and style of M/s. Classic Steels in 1985.
c) the name and/or mark Classic Steels has been used by the Plaintiff in respect of its stainless steel products and also as a part of its corporate name from 1985 onwards.
d) The Plaintiff is also the owner of copyright in the unique and distinctive "Classic Steels" label prepared by the Plaintiff, where "Classic Steels" is written in a distinctive form/pattern/font (Exhibit H pages 91-92 of the Plaint).
5. In the Plaint, in support of the Plaintiff''s case that the Plaintiff has used the name and mark "Classic Steels", continuously and extensively, the Plaintiff has relied upon the following documents:
(i) Invoices dated 14th March 1986, 22nd September 1987, and 21st December 1988 (Exhibit D1 page 27, Exhibit D2 page 28 and Exhibit D3 page 29 of the Plaint) showing sales of products under the name/mark "Classic Steels".
(ii) Certificate from Chartered Accountant certifying the turnover of the Plaintiff under the trading name M/s. Classic Steels, from 2008-09 to 2015-16. The cumulative turnover for this period is approximately Rs. 16,65,94,013/- (Exhibit C page 25 of the Plaint).
(iii) Invoices showing monies spent in respect of publicity/print material for the mark (Exhibits E to E4 pages 30 to 34 of the Plaint).
(iv) Brochure of the Plaintiff (Exhibit F2 page 39 to 81 of the Plaint).
(v) Representative cartons showing the user by the Plaintiff of its "Classic" mark (Exhibit G1 to G5 page 86 to 90 of the Plaint).
6. In addition to the material set-out in the Plaint, the Plaintiff has also filed an Affidavit in Rejoinder/Additional Affidavit to show adoption and user of the mark and/or name "Classic and/or Classic Steels". The said material is as under:
(i) Original Acknowledgement Receipt dated 6th December, 1985 in respect of another trademark "Classic" along with the Copy of the said trademark application (Exhibit A pages 21 to 23 of the Notice of Motion).
(ii) Copy of the online status of the mark- "Classic Steels" bearing number 1467897 from the website of the Trademark Registry (Exhibit B pages 24 of the Notice of Motion) showing the user detail since 12th November 1985.
(iii) Original letter dated 18th November, 1987 (Exhibit C page 38 of the Notice of Motion) addressed on the letterhead of M/s. Classic Steels to the Post Master, showing user of the said mark.
(iv) Original receipts of Post office along with Tracking report from Post Office in pursuance of the above mentioned letter (Exhibit D pages 39 to 40 of the Notice of Motion).
(v) An Original Article published in Hindi Newspaper "Navbharat Times" dated 21st September,1988 (Exhibit E page 41 of the Notice of Motion) showing the usage of the mark.
(vi) Copy of the Trademark Journal Extract along with the relevant correspondence with the Trade Mark Registry (Exhibit F pages no 42 to 44 the Notice of Motion).
(vii) Original/Duplicate Invoice cum delivery
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
