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High Court Of Delhi
T.T.K.PRESTIGE LIMITED - Appellant
Versus
HARPRASAD GUPTA - Respondent
Decided On : 10/13/1998
TRADEMARK - INFRINGEMENT - PRESTIGE - REGISTRATION - USE - SIMILARITY - INJUNCTION - CONDITIONS - [SECTION 2 (L) (Q), 28, 29, 31, 32, 33, 111, 111 (1), 112 (3)]
Fact of the Case:
Appellant, the registered proprietor of the trademark PRESTIGE for non-electric cooking utensils, including pressure cookers, filed a suit against the respondent for infringement of the trademark by using the deceptively similar trademark PRE/stage for pressure cookers. The respondent claimed prior use of the trademark PRE/stage and PRESTIGE and challenged the validity of the appellant's trademark.
Finding of the Court:
The court found that the appellant's trademark PRESTIGE was registered prior to the respondent's trademark PRE/stage and that the respondent had no vested right to use the trademark PRESTIGE for pressure cookers under Section 33 of the Trade and Merchandise Marks Act, 1958. The court also found that the respondent's use of the trademark PRE/stage was likely to deceive or cause confusion and amounted to infringement under Section 29 of the Act.
Issues: 1. Whether the respondent's use of the trademark PRE/stage infringed the appellant's registered trademark PRESTIGE? 2. Whether the respondent had a vested right to use the trademark PRESTIGE under Section 33 of the Act? 3. Whether the appellant was entitled to an injunction restraining the respondent from using the trademark PRE/stage?
Ratio Decidendi: 1. The court held that the respondent's use of the trademark PRE/stage was deceptively similar to the appellant's registered trademark PRESTIGE and was likely to cause confusion among consumers, thereby infringing the appellant's exclusive right to use the trademark under Section 28 of the Act. 2. The court held that the respondent did not have a vested right to use the trademark PRESTIGE for pressure cookers under Section 33 of the Act because the respondent's use of the trademark commenced after the appellant's registration and the respondent did not use the trademark in relation to pressure cookers prior to the appellant's registration. 3. The court held that the appellant was entitled to an injunction restraining the respondent from using the trademark PRE/stage, subject to certain conditions, including the submission of quarterly statements of production and sales and the furnishing of bank guarantees to compensate the opposite side in case the suit was decided on merits against either party.
Final Decision: The court allowed the appeal and granted an injunction restraining the respondent from using the trademark PRE/stage for pressure cookers, subject to certain conditions.
( 1 ) THIS FAO is directed against an order of dismissal of the application under Order 39, Rules I and 2 read with Section 151, Civil Procedure Code for injunction restraining the respondents from using the registered trade mark PRE/stage or any other deceptively similar trade mark and from committing infringement of appellants registered trade mark prestige during the pendency of the suit.
( 2 ) 2. 1. First, the facts in brief: 2. 2. According to the appellant s case, the trade mark "prestige" was registered under Registration No. 141602 in Class 21 in respect of non-electric cooking utensils, including pressure cookers on 14th December, 1949. On 12th January, 1957 name of the registered proprietor the trade mark was changed to "the Prestige Group Ltd. , Prestige House, 14-18 Holborn London". On 7th March, 1958, appellant No. 1 earlier known as T. T. Pvt. Ltd. was appointed as licensee to use the Trade Mark "prestige", in relation to pressure cookers manufactured and sold in India. It is stated that the appellant No. 1 has been using the trade mark PRESTIGE in India since 1957. On 4th October, 1985, the registered proprietor assigned the trade mark No. 141602 in favour of the appellant No. 2 Prestige Housewares India Ltd. , a joint venture floated in 1985 by Prestige Group (U. K.) and T. T. Pvt. Ltd. (appellant No. 1) by a deed of assignment duly recorded by the Registrar of Trade Marks. As such appellant No. 2 is the registered proprietor having exclusive right to use the trade mark PRESTIGE. It is claimed by the appellant that their sales which were Rs. 1. 33 lacs in the year 1959 had gone up to Rs. 1576. 11 lacs in the year 1985. Similarly, their cost of advertisement which was just Rs. 2,000/ - in the year 1959 has gone up to Rs. 115. 57 lacs by advertisement through various medias. Thus, appellant No. 2 is the registered proprietor of the trade mark PRESTIGE and owner of the goodwill that vest in the said trade mark. 2. 3. In the year 1986, the appellant learnt about the sale of pressure cookers under the trade mark PRE/stage. However, the appellant could not trace out the person who was manufacturing the PRE/stage pressure cookers. Appellant No. 2 filed criminal complaint under Sections 78 and 79 of the Act before the Chief Metropolitan Magistrate, Delhi. Several warrants were issued; raids were conducted and seized pressure cookers bearing the trade markv PRE/stage were seized from the premises of the respondent. The respondents stopped manufacturing. Consequently, the infringing goods disappeared from the market. The appellant presumed that pursuant to criminal case, the respondents have discontinued the infringing activities. 2. 4. In November, 1989, the appellant came across the advertisement of the respondent s Trade Mark Application No. 443514 in Trade Marks Journal No. 970 dated 1st November, 1989. The appellant filed opposition and objected to the registration. In July, 1990, the appellant leamt that the respondents had started reselling the pressure cookers under the trade mark PRE/stage. 2. 5. Ultimately, seeing that the respondents have re-started selling pressure cookers in July, 1990, a suit was filed in January, 1991 seeking an injunction as mentioned herein above, along with injunction application.
( 3 ). It is claimed by the respondents/defendants that M/s. Gupta Light House is a partnership firm engaged in manufacture and merchandise of gas lanterns, Hurricane lanterns, stoves, blow lamps, pressure cookers and parts thereof since 1972 under trade marks PRE/stage and PRESTIGE. Trade mark PRE/stage is registered at No. 283753-B in Class 11 of the Fourth Schedule under the Trade and Merchandise Rules (hereinafter REFERRED TO to as The Rules for short) as of 27th October, 1972. The trade mark PRESTIGE is registered at No. 335436-B in Class 11 of the Fourth Schedule of the Rules as of 7th April, 1978 in respect of Hurricane lanterns, stoves, blow lamps and parts thereof. Respondents app
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