SANJEEV SACHDEVA, J

CM No. 13503/2015 ((correction of name of advocate in the order dated 16.04.2015)

This is an application filed by the appellant seeking correction of the name of the advocate of the appellant in the order dated 16.04.2015.

The application is allowed, the name of the advocate of the Appellant Mr. Tapan Chaudhary shall be read in the order dated 16.04.2015 as having appeared for the appellant in place of Mr A.A.Aughssian and Mr Sumit Sarna, Advocates. The application is disposed of.

FAO(OS) 15/2015

1. The appellant, defendant in the suit, has filed the present appeal impugning the order dated 15.10.2014, whereby the learned Single Judge has confirmed the ad interim order dated 27.05.2013, by which order the appellant had been restrained from using the trademark “WORLD BOOK” or any other mark that is deceptively similar to the plaintiff’s registered trademark “WORLD BOOK” in respect of printing/publishing of books and other reference materials and educational products either in print or in software version as also on their website. By the said order, the learned Single Judge has held that use of the words “WORLD BOOK” as part of the corporate name and use of the domain name “worldbookcompany.in” is likely to cause confusion and deception.

2. The respondents had filed the subject suit for permanent injunction, damages for infringement of the trademark “WORLD BOOK” and passing off, dilution against the appellant. On 27.05.2013, an ex-parte ad interim injunction, as referred above, was granted in favour of the respondents.

3. The contention of the respondents (plaintiffs in the suit) was that the respondent No.1 is a publisher of encyclopedias and other reference materials in over 30 countries worldwide and in more than 12 languages. Respondent No.2, a company incorporated in India, was responsible for sales, marketing and distribution of goods and services under the trademark/trade name “WORLD BOOK”. As per the respondents, they are the largest selling print encyclopedia in the world and are well known in the business of publishing encyclopedias and other educational reference materials. Since its adoption in 1917, the respondents’ “WORLD BOOK” encyclopedia is considered as the number one selling print encyclopedia in the world. In addition to the use as a trademark, the mark “WORLD BOOK” forms part of the corporate identity and trading style of respondent No.1 as also its subsidiaries/affiliate companies throughout the world. It is contended that their encyclopedias and other reference materials under the trademark/trade name “WORLD BOOK” are available in print, software version as also online and are accessible on ‘worldbookonline.com’.

4. It is contended that the respondents have registration of trademark “WORLD BOOK” in over 27 countries in the world and in India. The respondents are registered proprietors of the trademark “WORLD BOOK” in respect of a wide variety of goods and services and the said marks are valid and subsisting. It is contended that the products and services of the respondents under the said trademark have been commercially available in India since 1993.

5. With regard to the appellant, it was contended that it was only in the first week of September 2012 that the respondents discovered that the appellant had registered a Company under the name of “WORLD BOOK COMPANY PVT. LTD”. It was also discovered that the appellant had registered a domain name ‘worldbookcompany.in’. It is contended that the use of the trademark/trade name “WORLD BOOK” by the appellant amounted to an infringement of the registered trademark of the respondent.

6. Per contra, the defence taken by the appellant in the written statement is that the words “WORLD BOOK” are commonly used words found in the English dictionary and no one can have exclusive rights to use these words which are not coined. It is contended that there is no confusion or deception. It is further contended that the respondent No.2 was registere