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2012 Supreme(Cal) 570
IN THE HIGH COURT OF CALCUTTA
I.P. Mukerji, J.
EMAMI LIMITED
Versus
TRIMURTI TEXTILE INDUSTRIES
GA No. 3529 of 2011; G.A. No. 4273 of 2001; C.S. No. 516 of 2001
Decided On : July 4, 2012
Advocate Appeared:
Goutam Chakraborty, Jishnu Saha, Atish Ghosh for the petitioner;
Ratnanko Banerjee, Lopita Banerjee, Kuldip Mallick for the respondents.
In an action for infringement of a registered trademark, the plaintiff is not required to prove passing off, but only that the defendant's use of the mark is in the course of trade and that the two marks are identical or deceptively similar.
Headnote:
TRADEMARK - INFRINGEMENT - INTERIM INJUNCTION - EFFECT OF REMAND - RES JUDICATA - RES SUB JUDICE - VALIDITY OF ORDER - FINALITY OF DECREE - PASSING OFF - SIMILARITY OF MARKS - IDENTITY OF GOODS - DELAY - FRESH CAUSE OF ACTION.
Fact of the Case:
The plaintiff, Emami Limited, filed a suit for infringement of its registered trademark 'Emami' against the defendants, who were also using the same mark for hosiery products. The plaintiff also sought an injunction to restrain the defendants from using the mark. An injunction application was filed and heard by Indira Banerjee J, who refused to grant an injunction on the grounds that the plaintiff had not established a prima facie case of infringement or passing off. The plaintiff appealed the decision, and the Division Bench remanded the matter back to the Trial Court for reconsideration in light of an order passed by the Joint Registrar of Trade Marks canceling the registration of the defendants' mark.
Finding of the Court:
The Court held that the order of the Joint Registrar of Trade Marks canceling the defendants' mark was not stayed, and therefore, the mark was no longer registered. This created a new circumstance, as the plaintiff's mark was now registered while the defendants' mark was not. The Court further held that the defendants' mark was identical to the plaintiff's mark, and that the use of the mark by the defendants was in the course of trade. Therefore, the Court found that the plaintiff had established a prima facie case of infringement.
Issues: 1. Whether the order of the Joint Registrar of Trade Marks canceling the defendants' mark was final and binding. 2. Whether the defendants' mark was identical to the plaintiff's mark. 3. Whether the defendants' use of the mark was in the course of trade. 4. Whether the plaintiff had established a prima facie case of infringement.
Ratio Decidendi: 1. The Court held that the order of the Joint Registrar of Trade Marks was not stayed, and therefore, the mark was no longer registered. This created a new circumstance, as the plaintiff's mark was now registered while the defendants' mark was not. 2. The Court further held that the defendants' mark was identical to the plaintiff's mark, and that the use of the mark by the defendants was in the course of trade. Therefore, the Court found that the plaintiff had established a prima facie case of infringement.
Final Decision: The Court allowed the plaintiff's application for an injunction, restraining the defendants from using the mark 'Emami' in respect of hosiery goods.
J.P. Mukcrji, J.
A word mark, a label mark and copyright relating to them are involved in this application. The word is "Emami". I will come to the details later.
2. This suit was filed in the year 2001. Thereafter an application for injunction was filed by the plaintiff. An injunction was sought to restrain the defendants from infringing the plaintiffs label mark "Emami", This is tha1 injunction application (G.A. 4273 of 2001) being presently heard by me.
3. It has a long history. Upon completion of affidavits it was heard a1 length before Indira Banerjee J. She delivered a judgment on 29th August 2005. The Court came to the prima facie conclusion that the plaintiffs had no1 been able to establish a prima facie case. It was observed that the defendants were using the alphabets TIK along with "Emami". Emami was also written in hindi. Furthermore, the plaintiff had not been able to make out a prima facie case regarding damage to its goodwill or "tarnishing of its image and repute". They had made considerable delay in approaching the Court. Her Ladyship also went to the extent of saying that the plaintiff could not establish "any great reputation". The sales figures "are hardly impressive", The learned Judge further said and held:
"As rightly argued by Mr. Chakraborty registration in itself may not be a defence against passing of, if it can be established that the defendant was trying to pass off its goods as that of the defendant. However, as observed above, the conditions for an action for passing off must exist.
Even if a mark is not internationally used, the mark might still be entitled to protection, if the plaintiff could establish even prima facie that the goods of the plaintiff were of such repute that the users would only associate the mark Emami with the goods of the plaintiff and that use of the mark by the defendant even in respect of totally different products would give the defendant an unfair advantage and consequently tarnish the image of the plaintiff. There is nothing on record to show that the plaintiff has in any manner been prejudiced. The plaintiff has it self not taken any action to stop the defendant from using the mark. The plaintiff has knowingly allowed the defendant to use the mark. Moreover the defendant was registered as proprietor of the mark Emami in respect of clothing before the plaintiff.
It is difficult to understand how both the plaintiff and the defendant could have obtained registration of the same Trade Mark in respect of the same class of goods. The plaintiff was prima facie not entitled to registration of the mark in respect of clothing until and unless the earlier registration of the Trade Mark in the name of the plaintiff was cancelled.
It is admitted in reply that the predecessor-in-interest if the plaintiff, Kemco Chemicals issued a notice way back in August, 1991 through its lawyers calling upon the defendant to cease and resist from using the mark Emami in respect of hosiery.
No follow up action appears to have been taken. The explanation that there was no use of the mark after 1991 and till 2001 when a notice was once again issued and the instant suit filed is difficult to accept. The defendants have produced bill books, challans and advertisements. Newspaper advertisements of textiles under the trademark Emami appear to have been issued till 2000.
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It is true that delay in itself may not be fatal to an action for passing off. At the same time, in considering an application for injunction, delay cannot be ignored and not so when the delay may reasonably be construed as laches amounting to acquiescence, as in this case, where no action has been initiated for over ten years after issuance of notice. Waiver of the notice might be inferred. In any case, there being no whisper of the first notice, the petition suffers £Tom suppression of a material fact.
For the reasons stated above, the defendant cannot be
