The court established that the trademarks ALOMAX and ALOCOMAX were deceptively similar, and the intention to use a trademark could be inferred from the filing of an application for registration.

Manmohan Singh, J. (Oral)

1. The plaintiff has filed the suit for permanent injunction restraining infringement of trademark, passing off, rendition of account, delivery up etc. against the defendant – M/s Navodya Exim Pvt. Ltd.

2. The case of the plaintiff is that the plaintiff company is engaged in the business of manufacturing, marketing and selling of Aluminum composite Panel, Plywood, Block Boards, Wood Doors, Window Frames, Veneers, Flush Doors, Lumber Metallic Laminates, Sun Mica and Nuts, Bolts, Screws, Washers, Leaf Springs, Clips, U.J. Cross, Steel Balls, Control Cables, Locks, Spokes and Rings, Aldrops, Latches, Channel, Door Stops, Hinges, Window and Door Fittings bearing trade mark ALOMAX, which falls in the Class-6 & 19 of the classification of goods under Schedule IV of the Trade Marks Act, 1999. The said trade mark is being used by the plaintiff since 2000.

3. The plaintiff is the registered proprietor of the trade mark ALOMAX for Plywood, Block Boards, Wood Doors, Windows Frames, Veneers, Flush Doors, Lumber Mettalic Laminates, Sun Mica in Class-19 vide No.1321329. The plaintiff’s application for registration in Class-6 was pending at the time of filing of the suit.

4. The case of the plaintiff against the defendant is that the defendant has applied for registration of the trade mark ALOCOMAX in the same category of goods falling in Class-6 & 19 of the classification and both trademarks, ALOMAX and ALOCOMAX are deceptively similar and such use of the trade mark by the defendant would constitute infringement of registered trade mark of the plaintiff. It was stated in the plaint that the said trade mark ALOCOMAX, adopted by the defendant with the mala fide intention and ulterior motives with a view to calculate deception and confusion in the market, otherwise, the defendant can give no justification whatsoever to use the similar trade mark. The defendant is also, therefore, passing off its goods as that of the plaintiff.

5. In a nutshell, the case of the plaintiff is that both sides of goods are falling in the similar classification i.e. Class-6 & 19, consumers of these products are identical, channels of trade are also identical and, therefore, there is a connection in trade exists between the plaintiff and defendant.

6. The plaintiff, thus, sought a decree for permanent injunction in terms of the prayer made in para 22 of the plaint, which reads as under:-

“(a) A decree for permanent injunction restraining the defendant, their associates, sister concerns, dealers, distributors through themselves and through servants, agents, stockiest, assigns and representatives and all other acting, for and on their behalf, from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods falling in Class-19 bearing the trade mark ALOCOMAX as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff’s registered trade mark ALOMAX which results in infringement of trade mark of the plaintiff.

(b) A decree for permanent injunction restraining the defendant, their associates, sister concerns, dealers, distributors through themselves and through servants, agents, stockiest, assigns and representatives and all other acting, for and on their behalf, from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods falling in Class-19 bearing the trade mark ALOCOMAX as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff’s registered trade mark ALOMAX which results in passing off the defendants goods as that of the plaintiff’s goods.

(c) For an order for delivery by the defendant to the plaintiff, all the offending goods including the goods bearing the trade mark ALOCOMAX, its packing materials, advertising materials, stationary, account books and other incriminating materials under the possession and control of the defendants for destruction and/or erasu