2017 Supreme(Cal) 391

IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
SOUMEN SEN, J.
Skipper Limited - Petitioner
Versus
Akash Bansal & Others - Respondents
G.A. No. 237 of 2016 & C.S. No. 7 of 2016 (Original Side)
Decided On : 09-08-2017

The defense of own name user under Section 35 of the Trade Marks Act, 1999 is not available to a partnership firm that is not using the unabbreviated names of the partners in an unabbreviated manner and the manner of user is likely to cause deception.

Headnote:

TRADEMARK - INFRINGEMENT - PASSING OFF - BANSAL - COMMON SURNAME - BONA FIDE USE - SECTION 35 OF THE TRADE MARKS ACT, 1999 - INJUNCTION - CONFIRMATION.

Fact of the Case:

The plaintiff, a manufacturer of metal pipes, claimed to be the proprietor of the word mark “BANSAL” and had been using it since 1981. The defendants, a partnership firm, also manufactured and sold metal pipes under the mark “BANSAL ASTER”. The plaintiff alleged that the defendants’ mark was deceptively similar to its own and that the defendants were trying to piggyback on the goodwill and reputation of the plaintiff and Astral Pipes, another market leader in PVC pipes. The plaintiff issued a cease and desist notice to the defendants, who replied by claiming bona fide use of the mark. The plaintiff filed a suit for infringement of trademark and passing off.

Finding of the Court:

The court held that the plaintiff had acquired statutory rights over the trademark “BANSAL” by virtue of its registration and was entitled to have exclusive use of the mark. The court also held that the defendants had failed to demonstrate any bona fide use of the mark and that their adoption of the mark was dishonest and intended to deceive the public. The court further held that the defendants’ use of the mark “BANSAL ASTER” was likely to cause confusion and deception among the public and constituted an infringement of the plaintiff’s trademark and passing off.

Issues: 1. Whether the plaintiff had acquired statutory rights over the trademark “BANSAL” by virtue of its registration? 2. Whether the defendants had demonstrated any bona fide use of the mark? 3. Whether the defendants’ adoption of the mark was dishonest and intended to deceive the public? 4. Whether the defendants’ use of the mark “BANSAL ASTER” was likely to cause confusion and deception among the public? 5. Whether the defendants’ use of the mark “BANSAL ASTER” constituted an infringement of the plaintiff’s trademark and passing off?

Ratio Decidendi: 1. The court held that the plaintiff had acquired statutory rights over the trademark “BANSAL” by virtue of its registration and was entitled to have exclusive use of the mark. The court relied on Section 29(5) of the Trade Marks Act, 1999, which provides that a registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. 2. The court held that the defendants had failed to demonstrate any bona fide use of the mark. The court noted that the defendants had applied for registration of the mark “BANSAL ASTER” after receiving the plaintiff’s cease and desist notice and that the defendants had failed to provide any explanation for the antedating of the user date in their application. The court also noted that the defendants were using the mark “BANSAL ASTER” in a manner that was likely to deceive the public. 3. The court held that the defendants’ adoption of the mark was dishonest and intended to deceive the public. The court noted that the defendants had adopted the mark “BANSAL ASTER” after receiving the plaintiff’s cease and desist notice and that the defendants had failed to provide any explanation for the antedating of the user date in their application. The court also noted that the defendants were using the mark “BANSAL ASTER” in a manner that was likely to deceive the public. 4. The court held that the defendants’ use of the mark “BANSAL ASTER” was likely to cause confusion and deception among the public. The court noted that the defendants’ mark was deceptively similar to the plaintiff’s mark and that the defendants were using the mark in a manner that was likely to lead the public to believe that the defendants’ products were those of the plaintiff. 5. The court held that the defendants’ use of the mark “BANSAL ASTER” constituted an infringement of the plaintiff’s trademark and passing off. The court granted an injunction restraining the defendants from using the mark “BANSAL ASTER”.

Final Decision: The court confirmed the interim injunction passed on 13th January, 2016 in terms of prayer (c) of the Notice of Motion.