Point of Law : A registered proprietor cannot disturb or interfere with the rights of a prior user of a trademark even if the prior user is not registered.

ORDER :

I.A. No.11874/2021 (under Order XXXIX Rule 4 r/w Sec. 151 CPC)

1. Aggrieved against the order dated 10.08.2021 passed by this Court, vide which ex parte ad interim injunction was granted in favour of plaintiff, the present application has been preferred on behalf of defendants seeking vacation thereof.

2. Pertinently, vide impugned interim order, defendants, its Directors, partners or proprietors, as the case may be, its officers, servants and agents are restrained from manufacturing, selling, offering for sale, supplying, advertising, directly or indirectly dealing in any business unauthorizedly using the plaintiff’s trade mark TOTAL or the mark TOPAZ (written in the same font and style as that of the plaintiff) or any other mark deceptively similar to the mark of plaintiff and permutations/combinations thereof amounting to infringement of plaintiff’s trade mark TOTAL and also to use the essential features of the plaintiff’s packaging/trade dress of its brand TOTAL amounting to infringement of the plaintiff’s copyrights subsisting in the packaging/trade dress of the plaintiff’s trade mark TOTAL.

3. The defendants have challenged the said order on the ground that defendants No.2 & 3 had adopted the mark TOPAZ in the year 2011, who are said to be sister concern of defendant No.1, which was incorporated in the year 2009. Thereby, respondents claim to be prior user of the trade mark TOPAZ since the year 2011 as against the claim of plaintiff, who adopted the mark TOTAL in the year 2015. Defendant No.3 claims to be registered proprietor of mark TOPAZ since the year 2015, which is still subsisting.

4. During the course of hearing, Mr. Jayant Mehta, learned senior counsel appearing on behalf of applicants/defendants submitted that plaintiff has not approached this Court with clean hands, as it claims to have known about defendants’ product in July, 2021, whereas the product of defendants is available in the market since the year 2011.

5. Learned senior counsel further submitted that defendants had adopted the unique and distinctive trade dress/packaging for marketing of TOPAZ brand in the year 2011 and it has no relevance to the copyright registrations obtained by the plaintiff for its product under the mark TOTAL, as the same are distinct and dis-similar. With respect to plaintiff’s allegation that defendants have copied the pictorial guidelines, learned senior counsel submitted that pictorial guidelines have been issued by the Government in July, 2020 and made effective from December 01, 2020. Learned counsel also submitted that the plaintiff does not have a word mark registration for the mark TOTAL and all registrations of the plaintiff pertain to device marks/label marks and so, no case for infringement is made out.

6. Learned senior counsel next submitted that plaintiff has admitted use of label since 20.02.2020, as has been mentioned in its trade mark application, whereas defendants in their application have mentioned use of trade mark since the year 2015 and also, the label of defendants is entirely different for which plaintiff has been given registration.

7. Learned senior counsel drew attention of this Court to the provisions of Section 17 of the Trade Marks Act to submit that when a trade mark contains any matter which is common to the trade or is otherwise nondistinctive, the registration does not confer any exclusive right in the matter forming part of the whole trade mark so registered. Learned senior counsel submitted that in Para-28 of the petition, plaintiff has admitted that it has no issue on the defendants’ use of wordmark TOPAZ.

8. To submit that plaintiff has failed to establish case of passing of against the defendants, learned senior counsel drew attention of this Court to Para-3(p) of the application to compare the other brands than TOPAZ in the industry with the plaintiff’s brands to show that the imag