The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.

JUDGMENT :

SHARMILA U. DESHMUKH, J.

1. This is an action for infringement of trade mark and passing o The case of the Plaintiffs is that the Plaintiff No.1 is the registered proprietor of trade mark “ROOKIES” and various “ROOKIES” formative trade marks of which the word “ROOKIES” is the leading and essential features. The registered domain name i.e. “https://rookiesjeans.com” also contains the trademark.

2. The Plaintiff No.1 is one of the shareholder and director of Plaintiff No.2 and Plaintiff No. 2 is the permitted user of trade mark “ROOKIES”. The Plaintiff Nos.1 and 2 are engaged in the business of designing, importing, manufacturing, marketing and sale of readymade garments and all kinds of clothing collection, footwear and ancillary products for men, women and children and are also engaged in the business of retailing the said goods through their exclusive brand outlets as well as multi brand stores under the name and style “ROOKIES” / “ROOKIES Jeans”. The Plaintiffs also have online presence on their own as well as third party e-commerce websites.

3. In the year 2008, the Plaintiff No.1 adopted the word “ROOKIES” as its trade mark. The domain name was registered on 1^st November, 2008. The Plaintiff No.1 applied for and secured registration of the trade mark “ROOKIES” and ROOKIES formative trademarks under Class 25 and subsequently also secured registration under Class 35, the relevant details are set out in paragraph 6(i) of the plaint. The earliest registration of the mark “ROOKIES” in class 25 was secured on 22^nd December 2008 with user claim of 3^rd November 2008. The registration in Class 35 was obtained on 23^rd May 2019 with user claim of 3^rd November 2008.

4. The Plaintiffs have also secured registration in Class 25 and Class 35 in Nepal, in Class 25 in Sri Lanka and Bangladesh in the year 2022-2023. In so far as country of Hong Kong is concerned, in the year 2018, the Plaintiffs filed an application for registration of the mark “ROOKIES JEANS CO/ROOKIES JEANS” in Class 25 and 35, which was opposed by the Defendant No. 1 vide notice of opposition dated 25^th January 2019 pursuant to which the Plaintiff did not contest the Hong Kong opposition.

5. The plaint sets out the wide array of goods marketed under the trademark “ROOKIES” as well as locations at which the multi-brand stores and exclusive brand outlets of Plaintiffs are located. It is stated that the Plaintiffs, as retailer launched their flagship store in Phoenix Mall in Kurla which led to launching of exclusive brand outlets in major cities like Raipur, Patna and Gujarat in India. In order to demonstrate the goodwill and reputation, the sales figures and promotional expenses duly certified by the Chartered Accountant are placed on record. It is submitted that the Plaintiffs brand is endorsed by celebrities.

6. It is submitted that the Defendant No.3 is the Director of Defendant No.2 and they are the exclusive franchisee of Defend