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2005 Supreme(Cal) 502
High Court Of Calcutta
Pinaki Chandra Ghose, Pravendu Narayan Sinha
PRAKASH GLASS, RUBBER WORKS - Appellant
Versus
HINDUSTHAN SAFETY GLASS WORKS PVT.LTD - Respondent
C. S. 138 Of 2004
Decided On : 08/05/2005
The use of a mark that is deceptively similar to a registered trademark is likely to deceive or confuse the public and cause damage to the proprietor of the registered trademark.
Headnote:
SAFEX TRADEMARK - INFRINGEMENT AND PASSING OFF - SECTIONS 27(2), 28(1), 31, 33, 34 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - SUMMARY: The Court held that the use of the mark 'safex float' and 'safex Tuf' by the appellant amounted to infringement of the respondent's registered trademark 'safex' and passing off. The Court noted that the respondent had been using the mark 'safex' since 1958 and had built up a reputation and goodwill for its products. The Court also noted that the appellant was appointed as a dealer of the respondent's products and was aware of the respondent's mark. The Court held that the appellant's use of a mark that was deceptively similar to the respondent's mark was likely to deceive or confuse the public and cause damage to the respondent's business.
Fact of the Case:
The respondent, a manufacturer of laminated and toughened glass, had been using the trademark 'safex' since 1958. The appellant was appointed as a dealer of the respondent's products in 2000. In 2003, the appellant started selling similar products under the mark 'safex float' and 'safex Tuf'. The respondent filed a suit for infringement of trademark and passing off.
Finding of the Court:
The Court held that the respondent had established a prima facie case of infringement of trademark and passing off. The Court noted that the respondent had been using the mark 'safex' for a long time and had built up a reputation and goodwill for its products. The Court also noted that the appellant was aware of the respondent's mark and that the appellant's use of a mark that was deceptively similar to the respondent's mark was likely to deceive or confuse the public and cause damage to the respondent's business.
Issues: Whether the appellant's use of the mark 'safex float' and 'safex Tuf' amounted to infringement of the respondent's registered trademark 'safex'. Whether the appellant's use of the mark 'safex float' and 'safex Tuf' amounted to passing off.
Ratio Decidendi: The Court held that the appellant's use of the mark 'safex float' and 'safex Tuf' amounted to infringement of the respondent's registered trademark 'safex' and passing off. The Court noted that the respondent had been using the mark 'safex' since 1958 and had built up a reputation and goodwill for its products. The Court also noted that the appellant was appointed as a dealer of the respondent's products and was aware of the respondent's mark. The Court held that the appellant's use of a mark that was deceptively similar to the respondent's mark was likely to deceive or confuse the public and cause damage to the respondent's business.
Final Decision: The Court dismissed the appellant's appeal and upheld the injunction granted by the trial court in favor of the respondent.
( 1 ) THIS appeal directs against an order of the Hon'ble First court dated December 23, 2004 whereby on an application of the respondent under Order 39 Rules 1 and 2 of the Code of Civil Procedure (hereinafter referred to as the CPC), the Hon'ble First Court was pleased to grant an order of injunction in favour of the respondent. The prayers made in the said application of the respondent are as follows :-
a) An order of injunction restraining the respondent by themselves or through their agents, servants and/or assigns from in any way manufacturing, marketing or selling any Glass products or laminated or toughened glass under the impugned Trade Mark or trade name 'safex float or using the mark 'safex' or any other mark which is deceptively similar to the registered trade mark of the petitioner or suing the essential and/or sailent feature of the petitioner's mark namely 'safex' in respect of toughened and/or laminated glass.
b) An order of injunction restraining the respondent by themselves or through their agents or servants and/or assigns from in any way passing off goods bearing the impugned Mark or trade name 'safex' or'safex float' or using any other deceptively similar mark or trade name resembling the registered trade mark of the petitioner in respect of glass including toughened and laminated glass which is calculated to deceive or likely to deceive and confuse members of the trade and consuming public to believe that the impugned product of the respondent is a product of the petitioner or that the petitioner is connected to and/or associated or related therewith.
c) An order of injunction restraining the respondent, their servants, agents and/or assigns from in any manner infringing the petitioner's registered trade mark No. 463502 or using any mark deceptively similar thereto in respect of any glass product.
( 2 ) FACTS revealed in this application that respondent is a Private limited Company and one of the oldest Glass Manufacturers in India and is e'ngaged in the business of manufacturing and sale of Laminated Safety glass Sheet, Toughened Safety Glass, Penguin Pane Insulated Glass, twin Bird and Golden fish Mirrors. Safety Bullet Resistant Glass and also other types of Glass used in Vehicles. Petrol Pumps and Offices. The said laminated and toughened Glass is sold by the respondent both within and outside the jurisdiction of this Hon'ble Court and under the mark SAFEX. The respondent enjoys goodwill and reputation all over India.
( 3 ) SINCE 1954 one Mr. D. N. Agarwal along with his family members formed a Partnership Firm in the name and style of D. N. Agarwal and Sons and started selling the aforesaid variety of glass in different parties of india using the said mark 'safex'. The said partnership business was converted into a company on or about 27th May, 1958 and was duly incorporated in the name of Hindusthan Safety Glass Works (Pvt.) Limited under the Companies Act, 1956 and was duly took over all the rights and liabilities including the said trade mark 'safex' which was sold all over india by the said Partnership Firm.
( 4 ) IN or about 1959 respondent appointed one Agency as its sole selling agent for promoting the sale of its glass including the glass bearing the mark 'safex'. Thereafter, respondent applied before the Indian standard Institute for the use of "standard Mark" and licence was issued. respondents applied on or about 24th November, 1986 under the Trade and merchandise Marks Act, 1958 (hereinafter referred to as the said Act) for registration of its mark "safex Laminated Safety Sheel" and "safex toughened Safety Sheet" which was duly registered in Class 19 under registration No. 463502.
( 5 ) RESPONDENT had been extensively and continuously using the said trade mark 'safex' in respect of its goods prior to 1958 and since 1958 respondent had been and still is using and selling the said glass under the aforesaid trade mark 'safex' Respondent appointed the appellant/ petitioner herei
