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2023 Supreme(Bom) 630
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
MANISH PITALE, J
Mauj Mobile Private Limited – Appellant
Versus
Mohalla Tech Private Limited & Ors. – Respondents
Interim Application No. 1466 of 2021 In Commercial Ip Suit No. 195 of 2021
Decided on : 05-06-2023.
Advocate Appeared:
For the Appellant : Mr. Sharan Jagtiani, Senior Counsel a/w Mr. Himanshu W. Kane, Mr. Kunal Dwarkadas, Mr. Vishal Narichania, Mr. Ashutosh Kane, Ms. Vedangi Soman and Ms. Ananya Mohapatra i/by W.S. Kane & Co
For the Respondent: Mr. Hiren Kamod, Mr. Prem Khullar, Mr. Aditya Chitale, Mr. Prashant Shetty and Mr. Sumedh Ruikar i/by RK Dewan Legal Services, Mr. Virag Tulzapurkar, Senior Counsel a/w Mr. Aditya Chitale, Mr. Prashant Shetty and Ms. Sumedh Ruikar i/by RK Dewan Legal
The registration of a trademark confers statutory rights on the proprietor, enabling them to sue for infringement, irrespective of whether or not the mark is used. Deceptive similarity and lack of bona fide explanation for adoption of a similar mark can establish a strong prima facie case for infringement and passing off.
Headnote:
MAUJ - Trademark Infringement - Sections 7, 28, 29, 47 of the Trade Marks Act, 1999 - The court found that the Plaintiff's registered trademark 'MAUJ' was infringed by the Defendants' deceptively similar trademark 'MOJ'. The Plaintiff's proprietary rights were upheld based on the registration of the trademark in specific categories under Class 41 and Class 38 of the Nice classification. The Defendants' claim of distinct services was refuted, and the court held that the Plaintiff had a strong prima facie case for infringement and passing off.
Fact of the Case:
The Plaintiff filed a suit and an application for interim reliefs, alleging infringement of its registered trademark 'MAUJ' by the Defendants' deceptively similar trademark 'MOJ'. The Plaintiff claimed to have used the mark 'MAUJ' since 2003 and had earned substantial goodwill in the market. The Defendants launched their app 'MOJ' in 2020, prompting the Plaintiff to issue a cease and desist notice.
Finding of the Court:
The court found that the Plaintiff had a strong prima facie case for infringement and passing off. It upheld the Plaintiff's proprietary rights based on the registration of the trademark in specific categories under Class 41 and Class 38 of the Nice classification. The Defendants' claim of distinct services was refuted, and the court held that the Plaintiff's trademark was deceptively infringed by the Defendants.
Issues: The main issues were the infringement of the Plaintiff's registered trademark 'MAUJ' by the Defendants' trademark 'MOJ' and the claim of distinct services by the Defendants.
Ratio Decidendi: The court's decision was influenced by the registration of the Plaintiff's trademark in specific categories under Class 41 and Class 38 of the Nice classification, the deceptive similarity between the rival marks, and the lack of bona fide explanation for the adoption of the Defendants' mark.
Final Decision: The court granted interim reliefs in favor of the Plaintiff, restraining the Defendants from using the impugned mark 'MOJ' and from passing off their products and services as that of the Plaintiff's.
JUDGMENT:
1. The Applicant/Plaintiff has filed the instant Suit and application for interim reliefs in the context of its registered trademark “MAUJ”. The said trademark of the Plaintiff is registered in various Classes, including 38, 41 and 42. The grievance of the Plaintiff is that the Defendants have infringed upon the said registered trademark of the Plaintiff by using a deceptively similar trademark “MOJ”. The Plaintiff alleges phonetic and structural similarity between the two marks and it also claims that the Defendants have committed the tort of passing off.
2. A perusal of the pleadings shows that, according to the Plaintiff, the predecessor-in-title of the Plaintiff had started using honestly and bona fide the mark “MAUJ” in and around the year 2003, in relation to software programming, entertainment and content distribution business. In the year 2003 itself domain name www.mauj.com was also registered. An application was submitted on 11th February, 2005, for registration of the trademark “MAUJ” in Class 42 for engaging in the business of computer programming, computer software, internet medium and developing computer and wireless software. Registration was granted on 17th November, 2006. Such an application was also made on the same date i.e. on 11th February, 2005, for registration of the trademark “MAUJ” in Class 38 in respect of telecommunications, media and technology, which was granted on 20th November, 2006.
3. It is stated on behalf of the Plaintiff that pursuant to a scheme approved by this Court, the MAUJ business division of the predecessor of the Plaintiff, including all trademarks, domain name and goodwill was demerged and transferred as a going concern to the Plaintiff. On this basis, the Plaintiff claims proprietary right in respect of the said registered trademark “MAUJ”. On 25th November, 2008, the Plaintiff applied for registration of the trademark “MAUJ Mobile” in Class 41 under the category “Entertainment”. Registration on the basis of the said application was granted on 30th August, 2016. The Plaintiff further applied on 22nd December, 2009, for registration of trademark “mauj.com” in Class 38 in respect of “Telecommunications”. Such registration was granted on 18th March, 2011. On 10th November, 2010, the Plaintiff applied for registration of trademark “MAUJ” in Class 41 in respect of “Entertainment” and such registration was granted on 30th August, 2016. It is on the strength of such registrations of its trademark “MAUJ” and its variants in the aforementioned Classes that the Plaintiff is asserting its proprietary rights.
4. According to the Plaintiff, it continued to engage in the business of digital content distribution and providing value added services in the mobile industry, including mobile applications for a considerable period of time, thereby earning substantial goodwill in the market. The Plaintiff has stated that it entered into contracts with 27 mobile operators, having presence in 14 countries including India, further stating that the cumulative revenue of the plaintiff for last about 10 years exceeds Rs. 241 Crores. In this backdrop, the Plaintiff claims its presence in the public domain for a considerable period of time.
5. The Plaintiff has stated that the Defendant No. 1 was incorporated in January, 2015 and that in the year 2016, one of the directors of the Plaintiff was introduced to a director of Defendant No.1. By relying upon an email dated 22nd September, 2016, whereby one of the directors of the Plaintiff was so introduced, it is claimed that the Defendants were specifically made aware about the business of the Plaintiff, which included the business pertaining to the said registered trademark “MAUJ” and also “Shadi.com” of the Plaintiff. According to the Plaintiff, email correspondence was exchanged between parties and on each occasion, the words “MAUJ Mobile-leading mobile Content and Commerce Company” were stated beneath the name and signature of the director of the Plainti
