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High Court Of Delhi
PHILIP MORRIS BELGIUM S.A. - Appellant
Versus
GOLDEN TOBACCO COMPANY LIMITED - Respondent
Interim Application 4439 of 1983
Decided On : 06/03/1985
TRADEMARK - VISA - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 2(1)(zb), 10(1), 11(1), 46(3) - INFRINGEMENT - BALANCE OF CONVENIENCE - TEMPORARY INJUNCTION - Plaintiff, a Belgian company, registered the trademark "VISA" for cigarettes in India. Defendant, an Indian company, started using the same trademark for its cigarettes. Plaintiff sued for infringement of trademark and sought a temporary injunction. Defendant contended that the plaintiff's trademark was not valid as it was not used in India for more than five years and that the balance of convenience was in its favor. The court held that the plaintiff's trademark was valid as the non-use was due to import restrictions imposed by the Government of India and that the balance of convenience was in favor of the plaintiff as the defendant had infringed its trademark.
Fact of the Case:
Plaintiff, a Belgian company, registered the trademark "VISA" for cigarettes in India. Defendant, an Indian company, started using the same trademark for its cigarettes. Plaintiff sued for infringement of trademark and sought a temporary injunction. Defendant contended that the plaintiff's trademark was not valid as it was not used in India for more than five years and that the balance of convenience was in its favor.
Finding of the Court:
The court held that the plaintiff's trademark was valid as the non-use was due to import restrictions imposed by the Government of India and that the balance of convenience was in favor of the plaintiff as the defendant had infringed its trademark.
Issues: 1. Whether the plaintiff's trademark was valid? 2. Whether the balance of convenience was in favor of the plaintiff?
Ratio Decidendi: 1. The court held that the plaintiff's trademark was valid as the non-use was due to import restrictions imposed by the Government of India under Section 46(3) of the Trade and Merchandise Marks Act, 1958. 2. The court held that the balance of convenience was in favor of the plaintiff as the defendant had infringed its trademark.
Final Decision: The court granted a temporary injunction restraining the defendant from using the plaintiff's registered trademark "VISA" or any other trademark deceptively similar thereto in relation to its cigarettes.
( 1 ) IN this suit for the grant of permanent injunction and rendition of account of profits the plaintiff Philip Morris Belgium S. A. , 187-189 Chaussee de la Hulpe, 1170 Bruxelles-Boitsfort, Belgium has moved an application against the defendant Golden Tobacco Company Limited, Tobacco House, Swami Vevekananda Road, Ville Parle West, Bombay under Order 39, Rules 1 and 2 of the Code of Civil Procedure for the grant of temporary injunction till the disposal of the suit whereby the defendant is sought to be restrained from using the plaintiffs registered trade mark "visa" or any other trade mark deceptively similar thereto in relation to its goods. The plaintiff alleges itself to be the registered proprietor of the following trade mark :the said trade mark is further alleged to be valid and subsisting. This trade mark is being used by the plaintiff in relation to cigarettes manufactured by it and sold in a large number of countries of the world but has not been able to sell in India any of its products under this trade mark since recent years because of import restrictions.
( 2 ) IT is further alleged that it was in or about the month of November 1980 that the plaintiff learned from an advertisement appearing in the Times of India Delhi issue of 27th October, 1980 introducting a new brand of cigarettes under the trade mark "visa" but this advertisement did noi indicate the name of the manufacturer and on enquiries made by the plaintiff it was learnt that it was the defendant who had introduced VISA cigarettes which were being sold not only in Delhi but in many parts of the country by the defendant taking advantage of the ban on the import of cigarettes which prevented the plaintiff from selling its cigarettes in India. Thereupon, the plaintiffs trade mark attorneys, Remfry and Son, New Delhi called upon the defendant vide letter dated 27-11-1980 to cease and desist from using the plaintiffs registered trade mark VISA in relation to goods not of the plaintiffs manufacture or any other mark which could be deceptively similar to the plaintiffs aforesaid trade mark. No reply having been received from the defendant the plaintiffs attorneys again wrote to the defendant on 17- 3-81 drawing its attention to the earlier letter dated 27-11-1980 and warning of a resort to the law court if no reply was received. A letter dated 25-3-1981 was received by the plaintiffs attorneys from R. K. Dew an and Co. on behalf of the defendant in which the plaintiff was informed that the defendant had already initiated rectification proceedings in respect of the plaintiffs aforesaid trade mark. The rectification proceedings are alleged to be only as a. counter-blast to the plaintiff s aforesaid letter and in anticipation of the proceedings which had been threatened by the plaintiff. The plaintiff after taking legal advice through their aforesaid attorneys from reputed attorneys in New York (USA) filed a suit being S. No. 158 of 1982 on 3-2-1982 against the defendant in this Court. That suit having been inadvertently filed in the plaintiffs former name Weltab S. A. , the same was withdrawn with liberty to file a fresh suit against the defendant in respect of the same subject matter and the necessary permission was granted by the Court on 6-10-1983 whereafter this suit was filed on 26th October, 1983.
( 3 ) THE application was resisted by the defendant.
( 4 ) ADMITTEDLY the defendant-company is using the plaintiffs trade mark VISA on its cigarettes sold in India. There is, thus the identity of the trade-marks and the plaintiff being the registered proprietor of the trade mark VISA, there is a clear infringement of the same on the part of the defendant.
( 5 ) IT is contended by the learned counsel for the defendant that the registered trade mark visa of the plaintiff is only in respect of tobacco manufactured and unmanufactured and is not in respect of cigarettes and so the display of the same on the cigarettes of the defendant could not con
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