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IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
SOUMEN SEN, J.
Shambhu Nath & Brothers & Others - Petitioners
Versus
Imran Khan - Respondents
G.A. Nos. 1267 & 1938 of 2018 & C.S. No. 102 of 2018
Decided On : 03-10-2018
The Court granted leave under Clause 14 of the Letters Patent to join causes of action for infringement of the plaintiff's registered trademark and passing off in the present suit. The Court held that the defendant's mark "SNJ TOOFAN" was deceptively similar to the plaintiff's mark "TOOFAN" and that the defendant was seeking to pass off his goods as that of the plaintiffs. The Court found that the balance of convenience was in favor of passing an order of injunction in favor of the plaintiff.
Fact of the Case:
The plaintiffs, manufacturers of electrical fans, filed a suit for infringement and passing off against the defendant, who had applied for registration of the mark "SNJ TOOFAN" in respect of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. The plaintiffs claimed that the defendant's mark was deceptively similar to their registered mark "TOOFAN" and that the defendant was seeking to pass off his goods as that of the plaintiffs.
Finding of the Court:
The Court found that the defendant's mark "SNJ TOOFAN" was deceptively similar to the plaintiff's mark "TOOFAN" and that the defendant was seeking to pass off his goods as that of the plaintiffs. The Court also found that the balance of convenience was in favor of passing an order of injunction in favor of the plaintiff.
Issues: 1. Whether the defendant's mark "SNJ TOOFAN" was deceptively similar to the plaintiff's mark "TOOFAN"; 2. Whether the defendant was seeking to pass off his goods as that of the plaintiffs; 3. Whether the balance of convenience was in favor of passing an order of injunction in favor of the plaintiff.
Ratio Decidendi: The Court held that the defendant's mark "SNJ TOOFAN" was deceptively similar to the plaintiff's mark "TOOFAN" and that the defendant was seeking to pass off his goods as that of the plaintiffs. The Court also found that the balance of convenience was in favor of passing an order of injunction in favor of the plaintiff. The Court relied on the following principles: * A mark is infringed if the essential features of the registered mark of an owner have been copied. * A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its "essential features". * If a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader. * The function of a trade mark is to identify the source of manufacture of goods. It is an indication of origin.
Final Decision: The Court granted leave under Clause 14 of the Letters Patent to join causes of action for infringement of the plaintiff's registered trademark and passing off in the present suit. The Court also granted an injunction restraining the defendant from using the mark "SNJ TOOFAN" or any other mark deceptively similar to the plaintiff's mark "TOOFAN".
1. This is an action for infringement and passing off. The petitioners are the manufacturer of electrical fans of various kinds. The petitioners in or about 1987 adopted the trade mark “TOOFAN”. The said trade mark “TOOFAN” is written in a stylish manner with a gap at the top of the two “o’s” in the word and the letter “F” written in capital in a rectangular box with the sides curved and the word “TOOFAN” forming only the distinctive and/or the prominent feature in the said mark taken as a whole. The said trade mark is represented as “IMAGE" and its stylized representations both have become distinctive of the goods of the petitioners and no one else. The word “TOOFAN” is printed on the products, packaging materials, brochures, warranty cards, bills and invoices of the petitioners. The said goods manufactured by the petitioners are distributed and/or sold extensively in various States including the State of West Bengal, Bihar, Orissa, Assam, Tamil Nadu, Andhra Pradesh, Uttar Pradesh, Madhya Pradesh, and Gujarat through an established network of dealers and distributors. The petitioners have claimed superior quality of the said goods and have disclosed its turnover since 1987-1988 till 2017-2018. The turnover is quite substantial. The petitioners claimed that the petitioners are prior adopters and users of the trade mark “TOOFAN” and have been using the said trade mark “TOOFAN” continuously and uninterruptedly. The petitioners claimed that by reason of such prior bona fide adoption coupled with long continuous use and wide publicity thereof, the petitioners have become the exclusive proprietor of the said trade mark “TOOFAN”. The purchasing public and the members of the trade easily identify and distinguish the goods sold under the mark “TOOFAN” to have been originated from or connected with the business of the petitioners only and none else. The petitioners have also disclosed the expenditure entered by the petitioners since 1998-1999 till 2016-2017 towards advertisement and publicity. The expenditures are also quite substantial. In order to prevent any unauthorized use of the said mark “TOOFAN” and in order to make people aware of the mark “TOOFAN” for the said goods exclusively belonging to the petitioners and none else, the petitioners published Caution Notices in various newspapers from time to time. The petitioners in this proceeding have disclosed few of such notices and advertisements.
2. In order to obtain statutory protection over the said trade mark “TOOFAN” on or about August 26, 1993, the petitioners filed an application being No.605175 in class 11 under the Trade & Merchandise Marks Act, 1958 (in short “TMM Act”, 1958) before the Trade Marks Registry, which was registered in their favour on 9th April, 2012.
3. The registration is in respect of installation for ventilating, namely, ceiling fans, parts and fittings thereof included in Class 11 for sale in the States of West Bengal, Bihar, Assam, Orissa, Uttar Pradesh, Madhya Pradesh, Gujarat, Andhra Pradesh and Tamil Nadu. The certificate of registration of trade mark under Section 23(2), Rule 62(1) of the Trade Marks Rules is annexed to the Petition. This stylized representation of the mark “TOOFAN” has also been registered under the Copyright Act, 1957 on 30th April, 2005 for the artistic work.
4. Subsequently, in or about March, 2010, the petitioners filed another application being No.1931345 dated 5th March, 2010 for registration of the word mark “TOOFAN” and obtained registration on 3rd April, 2017. The registration was, however, given for a device mark “TOOFAN”. On July 18, 2018, the trade mark attorney of the petitioners has requested the Deputy Registrar of Trade Mark to amend the status of the registered trade mark from device to word.
5. The petitioners alleged that in or about October, 2017, the petitioners came to know that the respondent had also applied for registration of the mark “SNJ TOOFAN” which was published in the Trade Marks Journal No.182
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