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High Court Of Calcutta
Kalyan Jyoti Sengupta
THREE-N-PRODUCTS PRIVATE LTD. - Appellant
Versus
KARNATAKA SOAPS AND DETERGENTS LIMITED - Respondent
C. S. 271 Of 2004
Decided On : 05/18/2006
AYUR TRADE MARK - INFRINGEMENT AND PASSING OFF - 'AYUR' REGISTERED TRADE MARK FOR COSMETICS - SUBSEQUENT REGISTRATION OF 'AYUR CARE' FOR SOAP - NO INFRINGEMENT OF 'AYUR' FOR SOAP - PASSING OFF ESTABLISHED - INJUNCTION GRANTED RESTRAINING USE OF 'AYUR' ON SOAP.
Fact of the Case:
Plaintiff, the registered owner of the trademark 'Ayur' for cosmetics, filed a suit for infringement and passing off against the defendants, who were using the mark 'Ayur Care' for their soap products. The plaintiff claimed that the defendants' mark was deceptively similar to its own and was likely to cause confusion among consumers.
Finding of the Court:
The court held that there was no infringement of the plaintiff's trademark 'Ayur' for soap, as the defendants had a subsequent registration for the mark 'Ayur Care' for soap. However, the court found that the plaintiff had established a case of passing off, as it was the senior user of the mark 'Ayur' and the defendants had adopted the mark without any explanation.
Issues: 1. Whether the defendants' use of the mark 'Ayur Care' for soap infringed the plaintiff's registered trademark 'Ayur' for cosmetics? 2. Whether the plaintiff had established a case of passing off?
Ratio Decidendi: 1. The court held that there was no infringement of the plaintiff's trademark 'Ayur' for soap, as the defendants had a subsequent registration for the mark 'Ayur Care' for soap. The court noted that under the Trade Marks Act, 1999, a person is entitled to sue for infringement of a trademark only in respect of goods for which its trademark has been registered. 2. The court found that the plaintiff had established a case of passing off, as it was the senior user of the mark 'Ayur' and the defendants had adopted the mark without any explanation. The court noted that the plaintiff had been using the mark 'Ayur' since 1984, while the defendants had only started using the mark 'Ayur Care' in 2002.
Final Decision: The court granted an injunction restraining the defendants from using the mark 'Ayur' on their soap products. The court gave the defendants three months' time to comply with the injunction.
( 1 ) THE above motion has been taken out by the plaintiff in a suit for infringement and passing off, for the interlocutory relief in the form of injunction restraining the respondents and/or their servants and/or agents and/or assignees and each of them or otherwise howsoever from using the mark 'ayur Care' or infringing the registered trade mark adopted by the petitioner or any other trade mark deceptively similar to the petitioner's registered mark 'ayur' and prefixing or suffixing the word 'ayur' in any other words.
( 2 ) SIMILAR injunction has been asked for from passing off or attempting to pass off the products manufactured by them by using the name 'ayur' or any other name deceptively similar to 'ayur' namely 'ayur Care'.
( 3 ) THE case of the petitioner is that the plaintiff/petitioner was incorporated on 4th December, 1991 under the provisions of the Companies Act, 1956 and since then it has been carrying on business in manufacturing and selling of various kinds of cosmetics, hair lotions, essential oils, shampoo, dried and cooked fruits, coffee, sugar, flour and vegetables, jellies and other production under the trade mark and name 'ayur'.
( 4 ) THE petitioner company was incorporated to take over the assets properties and business of the entire partnership firm which was carrying on similar business under the same name of the plaintiff. In essence the petitioner is the successor of all rights, interests and properties of the partnership firm of Three-N-Products. The said partnership firm used to carry on business under the trade name or name 'ayur' since 1984. Actually the said mark 'ayur' was registered under the name of the said firm under the provisions of trade and Merchandise Marks Act, 1958 for various products, which includes soaps, cosmetics and different registration marks were given for the said mark on diverse dates between 14th May, 1984 till 3rd September, 1990.
( 5 ) THE petitioners claim that petitioner has also applied for and got registration of its mark 'ayur' acted its trade mark 'ayur' registered in nepal and Newzeland on 7th July, 2003 with effect from 22nd November, 2002. Since 1989 and onwards with the said mark the predecessor-in-interest of the petitioner and at present the petitioner has been carrying on business of all the products and goods as mentioned therein.
( 6 ) IN the year 2003-04 the petitioner had done business with the mark 'ayur' of more than 21 million rupees. The petitioner has been spending from ' 984 till 2004 very substantial amount on account of advertisement. In the year 2002-03 the petitioner spent a sum of Rs. 1. 5 crores a sum of rupees 80,55,845. 90p till September, 2003 on account of advertisement. Therefore, according to the petitioner it is established prima facie that the said mark 'ayur' has been used by it as registered proprietor and user of the said mark, in relation to cosmetics products, which includes soap. In or about 2nd August, 2004 the petitioner discovered for the first time from the market that the respondents No. 2 its servants and agents had purportedly sold cosmetic soap manufactured by the respondent No. 1 named as 'ayur care' with very similar of almost identical brand with registered trade mark of the petitioner and in any event are deceptively and confusingly similar with that of the plaintiff. Thus they have infringed the petitioner's registered trade mark and they are also passing off their goods as those of the petitioner. The style and colour scheme and writing type on the cosmetic soap manufactured and sold by the said respondents, particularly the respondents no. 2, are identical or very similar to that of the petitioner's registered trade mark and/or artistic work and in any event deceptively and confusingly and confusing similar to that of the petitioner's trade mark.
( 7 ) THE respondent No. 1 in its affidavit has stated about its own goodwill in relation to their own products namely 'mysore Sandal S
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