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2009 Supreme(Del) 985
THE HIGH COURT OF DELHI AT NEW DELHI
HONBLE THE CHIEF JUSTICE HONBLE DR. JUSTICE S.MURALIDHAR, J.
PIONEER NUTS AND BOLTS PVT. LTD - Appellant
versus
M/s. GOODWILL ENTERPRISES - Respondent
FAO (OS) 334/2008
Decided on : 11.09.2009
Mr. N.K. Kaul, Sr. Adv. with Mr. Sanjeev Singh, Mr. Amit Kumar Singh, Ms. Shikha, Mr.Karan Mehta, Mr. Amit Jha, Mr. Shailen Bhatia, Ms. Anita Kapur & Mr. Amit Jain, Advs.
The main legal point established in the judgment is the requirement for the Defendant to prove prior use of the trademarks 'TUFF' and 'TUFF LABEL' to defend against trademark infringement and passing off claims.
Headnote:
TUFF - Trademark Infringement - Trade Marks Act, 1999 (Sections 2(1)(zg), 11, 28, 34) - The court discussed the trademarks 'TUFF' and 'TUFF LABEL' in relation to nuts, bolts, screws, and studs. It highlighted the legal provisions of the Trade Marks Act, including Sections 2(1)(zg), 11, 28, and 34, and their interpretations, influencing the decision.
Fact of the Case:
The Plaintiff sought an ad interim injunction against the Defendant for infringing and passing off its registered trademarks 'TUFF' and 'TUFF LABEL' in relation to nuts, bolts, screws, and studs. The Plaintiff claimed ownership and goodwill in the marks, while the Defendant adopted deceptively similar trademarks. The Plaintiff alleged that the Defendant's adoption of the marks was dishonest and fraudulent, causing confusion and deception in the market.
Finding of the Court:
The court found that the Defendant had not proven prior use of the marks 'TUFF' and 'TUFF LABEL' before the Plaintiff's use. It noted that the Plaintiff had made out a prima facie case for the grant of an ad interim injunction. The balance of convenience favored the Plaintiff, and an interim injunction was granted, restraining the Defendant from using the marks during the suit.
Issues: The key issues included trademark infringement, passing off, prior use of trademarks, and the balance of convenience in granting an interim injunction.
Ratio Decidendi: The court emphasized the need for the Defendant to prove prior use of the trademarks 'TUFF' and 'TUFF LABEL' before the Plaintiff's use. It considered the balance of convenience and found in favor of the Plaintiff, granting an interim injunction.
Final Decision: The impugned judgment was set aside, and an interim injunction was granted in favor of the Plaintiff, restraining the Defendant from using the marks 'TUFF' and 'TUFF LABEL' during the pendency of the suit. The Defendant's application was dismissed, and the costs were awarded to the Plaintiff.
S. Muralidhar, J.
1.This appeal is directed against the impugned judgment and order dated 25th April, 2008 passed by the learned single Judge rejecting I.A. No. 780/2007 filed by the appellant seeking an ad interim injunction against the Defendant infringing and passing off its registered trademark „TUFF and „TUFF LABEL.
2. The parties are referred to by their status in the suit, i.e. the Appellant is referred to as the Plaintiff and the Respondent as the Defendant.
3. The Plaintiff states that it adopted the trademarks „TUFF and „TUFF LABEL on 1st June 1996 in relation to nuts, bolts, screws and studs. Its application for registration of the mark „TUFF in Class-6 goods was made on 11th February 1998, advertized in the Trademarks Journal No. MEGA-1 on 25th August, 2003 and Registration (under No. 791109) was granted in respect of the mark „TUFF on 14th May, 2004 effective 11th February 1998. The Plaintiffs application for registration of the mark „TUFF LABEL was advertised in the Trade Marks Journal No. 1328 Suppl. (5) dated 30th March 2005 and granted registration (under No. 1073841) in Class 6 goods on 19th September 2005 effective 15th January 2002. The Plaintiff asserts that it is the owner and the proprietor in the artistic features in TUFF LABEL. The Plaintiff states that its copyright in TUFF LABEL is registered under the Copyright Act 1957 under A-74315/2005. The Plaintiff claims that it has been honestly and bonafide using the marks continuously in the course of trade since their adoption.
4. According to the Plaintiff, the goods manufactured by it have been accredited with ISO 9001:2000 certification by the TUV South Asia Private Limited. The Plaintiff claims to have acquired and built up its reputation and goodwill in relation to the products on which the marks are used. It advertizes its products through an exclusive website www.tuffbolt.com . It claims that its goods maintain the highest level of quality and precision. It states that it has spent a substantial amount on publicity and that its marks have acquired secondary significance denoting the said goods and business of the Plaintiff. It is asserted that the marks „TUFF and „TUFF LABEL have become distinctive and well known trademarks within the meaning of Sections 2(1)(zg) and 11 of the Trade Marks Act, 1999 („TM Act) in relation to the said goods and business.
5. The Defendant is stated to have adopted an identical/deceptively similar trade mark „TUFF LABEL and „TUFF & TUFF in relation to screws (self taping). A copy of the impugned mark adopted by the Defendant is placed on record. It is averred that the Defendants marks are identical to and deceptively similar in each and every respect: i.e, phonetically, visually, structurally and in the basic idea and essential features. It is alleged that by adopting the impugned mark, the Defendant had infringed and passed off the Plaintiffs proprietary rights in the marks.
6. The Plaintiff has placed on record copies of the Defendants applications advertised in the Trade Marks Journal. The first is application No. 1301515 dated 10th August, 2004 by Hereet Singh trading as Goodwill Enterprises for the mark „TUFF in respect of “Screws (Self Tapping)” advertised in the Trade Mark Journal No. 1331 dated 1st June, 2005. In the column „proposed to be used, it is indicated: “(DELHI)”. There is an additional representation dated 31st January 2007 made by Harpreet Singh in this application for registration of the mark in Class 12 goods claiming user since 1991. The second is application No. 9427887 dated 27th July 2000 by Harpreet Singh, Hardev Singh and Kushwant Singh trading as Good Will Industries claiming user since 1st April 1995 in respect of the mark TUFF for Screw (Self Tapping) published in the Trade Marks Journal No. 1345 dated 1st June 2006. It is stated in the advertisement that the application is to be associated with Application No. 1030155. The third is an application No. 1302920 date
