The use of a registered trademark for goods that are not similar to those for which the trademark is registered does not infringe the trademark, unless the use of the trademark takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

Sanjib Banerjee, J.

1. The rhinoceros is in the court: not to protest its shrinking natural habitat as it has no voice to do so; but only by its shorter, more-endearing name. And even as the parties jostle in the reflected glory of the majestic rhino, the name itself threatens to be a bull in the China shop of trademark law.

2. The appeal is directed against a judgment and order of December 9, 2015 by which the appellant has been restrained from manufacturing, selling or distributing or advertising or dealing with cement under the mark ‘Rhino’ in a particular colour scheme and get-up and also from infringing the contesting respondents’ mark of ‘Rhino’. In addition, the appellant has also been restrained from passing off cement under the mark ‘Rhino in sacks with the red, black and white colour scheme or get-up similar to the contesting respondents’. The respondent Nos. 1 and 2 have a cross-objection to the extent that such respondents were found not to have made out a case under Section 29(4) of the Trade Marks Act, 1999 and to the extent that further orders sought by such respondents as plaintiffs were declined.

3. The appellant has started selling cement in gunny bags and like packaging material from January, 2015 under the mark ‘Rhino’. The respondent Nos. 1 and 2, the plaintiffs in the suit (hereinafter referred to as the respondents), have been using the word-mark ‘Rhino’, which is registered in class 19, in course of their manufacture and sale of asbestos sheets and asbestos building materials. The registration, granted on March 31, 1980, dates back to the date of the application of October 10, 1977, which claimed user thereof since September 25, 1977. The discussion here proceeds on the basis that the registered word-mark ‘Rhino’ remains valid and such registration has been kept renewed, since no argument to the contrary has been made. In addition, the respondents have a registration in respect of a black rectangular device with the word ‘RHINO’ appearing in white therein. The device-mark is registered in class 6 for galvanised steel sheets with effect from January 1, 2007 and dating back to January 18, 1996, which was the date of the application. The claim in the application was that such device-mark had been used since March, 1995. Another device-mark in the form of the outline of a rhinoceros is registered in favour of the respondents since October 14, 2003 and dating back to September 10, 1997. Such registration is in class 6 for galvanised steel sheets. There is a further device-mark in the outline of a rhinoceros registered in favour of the respondents since May 16, 2006 and dating back to September 10, 1997 in class 19 pertaining to asbestos sheets and asbestos building materials.

4. The appellant claims that the mark ‘Rhino’ is commonly used in respect of divers products, particularly in the North-East as the rhinoceros is the most famous animal in the forests of Assam by the Brahmaputra river and the neighbouring areas. The appellant contends that no solitary commercial venture or entity can claim exclusive rights over the mark ‘Rhino’ nor is such mark common to only a particular trade or line of goods or services. The most vociferous submission of the appellant is that the word-mark ‘Rhino’ has not fastened to the respondents’ products or their asbestos sheets for the respondents to claim any secondary meaning, associating the mark exclusively with their goods.

5. The appellant flaunts its gunny bags in court that prominently carry the mark ‘Rhino’ with cement written equally conspicuously just below the mark ‘Rhino’ and the name of the manufacturer prominently displayed towards the bottom of the bag. The appellant asserts that it is inconceivable that the most unwary of customers would buy the appellant’s bag of cement when he intended to buy the respondents’ asbestos sheets. The appellant says that in the light of the appellant’s name and the source of its cement being prominently displayed in its packa