The distinctiveness of trade marks, the descriptive nature of words used, prior use of the mark, and delay in legal action are crucial factors in determining trade mark infringement cases.

(August 3, 2001) 2001 (TLS)125881

2001-AD (Del)-6-783

GILLETTE COMPANY Vs. A. K. Stationery

A. K. SIKRI

( 1 ) THE plaintiff no. 1 - Gillete Company incorporated in U. S. A. has filed this Suit for permanent injunction, rendition of accounts and damages under Section 27 and 105 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act, for short ). The plaintiff no. 2 - Luxor Writing Instruments Limited is an affiliate of plaintiff no. 1 which is incorporated in India under the Indian laws. It is 50% owned by the plaintiff no. 1 and has been licensed by the plaintiff no. 1 to use its various trade marks. The dispute in the present Suit relates to trade mark flexgrip which is used by the plaintiffs in connection with a wide range of writing instruments. By this Suit, the plaintiffs are seeking a decree of permanent injunction restraining the defendants from using the trade mark flexgrip upon or in relation to their writing instruments or other articles of stationery in violation of the plaintiffs,common law rights in the trade mark FLEXGRIP. The defendant no. 1 is only a retail outlet which is trading in various stationary items and the defendant no. 3 is Sales Office of the defendant no. 1. It is infact the defendant no. 2 - Sanghvi Writing Industries Limited, Mumbai which is the manufacturer and seller of writing instruments and other articles of stationery. This Company is manufacturing and selling the writing instruments including ball point pens, etc. under the trade mark EKCO.

( 2 ) THE dispute however in the present case is that the plaintiff is the exclusive proprietor of trade mark flexgrip and the defendants have no right to use the word flexgrip in its writing instruments. It may be mentioned that the plaintiff is using for its product the trade mark paper MATE FLEXGRIP and the defendants are using the word flexgrip alongwith the word ekco on its products i:e. ekco FLEXGRIP .

( 3 ) ALONG with the Suit, the plaintiff also filed IA; 12520/99 under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure. While issuing summons to the defendants in the Suit, ex-parte injunction Order dated 16/12/1999 was granted restraining the defendants, their Directors, officers, partners, servants, agents, representatives and those acting in concert with them or otherwise, from using the plaintiff s trade mark flexgrip on their products in any manner or marketing any product bearing plaintiffs trade mark flexgrip . The defendants have filed reply to these applications and have also filed IA. 3572/2000 for vacation of the ex-parte injunction Order dated 16/12/1999. This is how both the applications are heard together and are disposed of by this Order.

( 4 ) IN support of plaintiffs case, Mr. R. K. K. Shankardass, learned counsel appearing for the plaintiff made the following submissions:-

1. The plaintiff no. 1 is world renowned Company which is having world wide operations and its product are marketed and sold in various countries. It has many leading international brands in most products, including GILLETTE, PARK AVENUE,oral-B, BRAUN, DURACELL. In respect of its stationery products business under the trade mark flexgrip enjoys very important place. Since the year 1989, the plaintiff no. 1 has been continuously using the trade mark flexgrip in connection with its products. Application for registration of flexgrip in Clause 16 has been filed with the Registrar, Trade Mark, India on 19/1/1995 which is pending at the trade mark registry. It has however secured registration of this trade mark in various countries and in many countries the applications for registration are pending. The details in this respect are given in para 9 (iv) of the plaint. It has acquired global reputation and public recognition and sales figures are in millions of US $ every year. Advertising expenditure also runs in millions of US $. The plaintiffs flexgrip enjoys spill over repu