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High Court Of Delhi
PLASTICIANS INDIA - Appellant
Versus
RAKESH COTTAGE INDUSTRIES - Respondent
Decided On : 09/01/1996
TRADEMARK - PASSING OFF - INFRINGEMENT OF COPYRIGHT - SIMILARITY IN NAME, LABEL, AND GET UP - PRIOR USER - INJUNCTION - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 27, 105, 106.
Fact of the Case:
Plaintiff, a partnership firm, claimed prior user of the trademark 'gopal' for mathematical instruments and geometry boxes since 1979. They alleged that the defendant was passing off their goods as those of the plaintiff by using an identical trademark and similar artistic features on their geometry boxes. The plaintiff sought an injunction to restrain the defendant from using the trademark 'gopal'.
Finding of the Court:
The court found that the plaintiff had been using the trademark 'gopal' and the artistic work on their geometry boxes since 1979. The court also found that the defendant had copied the plaintiff's trademark and artistic features with a view to passing off their goods as those of the plaintiff. The court held that the plaintiff had a right to the exclusive use of the trademark 'gopal' and the artistic work on their geometry boxes and granted an injunction restraining the defendant from using the said mark.
Issues: 1. Whether the plaintiff was the prior user of the trademark 'gopal' and the artistic work on their geometry boxes? 2. Whether the defendant was passing off their goods as those of the plaintiff by using an identical trademark and similar artistic features on their geometry boxes?
Ratio Decidendi: 1. The court held that the plaintiff had been using the trademark 'gopal' and the artistic work on their geometry boxes since 1979. The court relied on the evidence of advertisements in trade journals and the directory of the Delhi Stationers Association to establish the plaintiff's prior user of the mark. 2. The court held that the defendant had copied the plaintiff's trademark and artistic features with a view to passing off their goods as those of the plaintiff. The court noted that the defendant had used the same trademark and similar artistic features on their geometry boxes, and that the defendant was a member of the same associations as the plaintiff. The court also noted that the defendant had not provided any evidence to show that they had adopted the trademark 'gopal' for any legitimate reason.
Final Decision: The court granted an injunction restraining the defendant from using the trademark 'gopal' and the artistic work on their geometry boxes.
( 1 ) THE plaintiffs, a partnership firm claiming themselves to be the prior user of trade mark gopal since about February 18,1979 in respect of the mathematical instruments, geometry boxes, etc. has filed this suit for passing off of their trade mark and infringement of copyrights by the defendants. The allegations made by the plaintiffs are that they have been manufacturing the geometry boxes under the trade mark gopal which has a distinctive and unique characteristic, artistic work and design. The alleged distinctive features of the Plaintiff s trade mark include printing of the geometry box in multicolours, having a lake in the background with the stream flowing at the left top corner below the trade mark gopal , while there are mountains appearing at the right top corner of the said box, below which is a tree. On the left sidep there are bushes and three lotus flowers in the lake. On the bottom right side of the box, the logo of the plaintiff, with the first word of the trading style of the plaintiff namely plasticians appears. In the centre a boy with longhair wearing a peacock feather in his hair appears feeding something to a cow with his right hand, while he has kept his left hand at the neck of the cow, holding a flute. On the back side panel of the cover lid of e box the name of the plaintiff with complete address appears, while on the front side panel of the said cover lid, the retail price of the box has been mentioned. The plaintiffs have used the design/artistic work on the card board cover of the geometry box in the same manner as on the box. On the card board the design has been printed with the background colour yellow. On the front side panel of the said cover, the trade mark gopal , the description of the goods and the name and address of the plaintiff appears in red ink. The plaintiff claims copyright in the said artistic work relating to the geometry box and its card board cover and claims to be the owner thereof. The aforesaid trade mark and packing is alleged to be continuously, openly, extensively and exclusively used by the plaintiff without interruption since 16th February, 1979. Plaintiff is alleged to have given wide publicity to the aforesaid mark including advertisements in the trade journal paper and Stationery Samachar and also in the Members Directory of the delhi Stationers Association (Regd.) of which the defendant is also a member. It is, therefore, alleged that defendant had complete knowledge that the said trade mark and artistic work belonged to the plaintiff. Plaintiff claims to have acquired goodwill and reputation in the trade mark and the artistic work in respect of the aforesaid goods. The plaintiffs are also alleged to have filed an application for registration of the trade mark gopal with the Registrar of Trade Marks on 12th April, 1991 under No. 548898 in Class: 16 and the application is stated to have been accepted for advertisement in the Trade Marks Journal.
( 2 ). It is alleged that in the first week of July, 1994 the plaintiff came across a geometry box with an identical trade mark and similar artistic features as that of the plaintiff. On the cover lid of the said geometry box the name of the defendant appeared. However, on the card board cover it was written as manufactured by High Class Mathematical Instrument Boxes. On enquiries alleged to have been made by the plaintiff it came to their knowledge that the said geometry box were being manufactured and sold by the defendant only recently. On being requested by the plaintiff to stop infringing their rights the defendant threatened to flood the market with infringed goods.
( 3 ). It was in these circumstances that plaintiffs filed the present suit for passing off. Along with the suit an application under Order 39 Rules 1 and 2 read with Section 151 Civil Procedure Code was also filed. By an ex-parte order passed on September 21, 1994 this Court restrained the defendant from using their trade m
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