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2006 Supreme(Del) 2409
IN THE HIGH COURT OF DELHI
A.K. Sikri, J.
Sh. Manoj Kumar Maheshwari Trading As Supreme Suhag Sticker Bindi - Appellant
Versus
Tips And Toes Cosmetics Pvt. Ltc. - Respondent
CS (OS) No. 1338 of 2002
Decided On : 29-11-2006
For the Appellant : Ashok Mittal.
Section 142 of the Trade and Merchandise Marks Act, 1957, provides a remedy for groundless threats of legal proceedings for trademark infringement, allowing the aggrieved party to obtain a declaration that the threats are unjustifiable and an injunction against the continuance of the threats.
Headnote:
Trade Mark Infringement - Threats of Legal Proceedings - Trade and Merchandise Marks Act, 1957, Section 142
Fact of the Case:
Plaintiff filed suit under Trade and Merchandise Marks Act and Copyright Act for declaration and permanent injunction against groundless threats by defendant to stop trading under plaintiff's trademark 'SUPREME SUHAG'. Plaintiff alleged that defendant's threats were groundless as plaintiff's trademark did not infringe defendant's rights.
Finding of the Court:
The court found that there was no similarity between the trademarks and the plaintiff's trademark did not infringe the defendant's trademark. The court invoked Section 142 of the Trade and Merchandise Marks Act, 1957, to grant injunction against the defendant's threats of legal proceedings.
Issues: Trademark infringement, groundless threats of legal proceedings, application of Section 142 of the Trade and Merchandise Marks Act, 1957
Ratio Decidendi: The court applied Section 142 of the Trade and Merchandise Marks Act, 1957, to provide relief against groundless threats of legal proceedings for trademark infringement. The court emphasized that the threats need not be contained in a letter but could be held out in circulars or advertisements.
Final Decision: The court decreed the suit by directing the defendant to desist from giving threats till the pendency of the applications for registration of Trade Mark and Copyright, without awarding any costs.
JUDGMENT :
A.K. Sikri, J.-
1. Plaintiff has filed this suit u/s 120 of the Trade and Merchandise Marks Act and Section 60 of the Copyright Act, 1957, for declaration and permanent injunction against the threats given by the defendant to institute legal proceedings against the plaintiff herein. It is alleged that plaintiff is selling the goods under the trademark/label 'SUPREME SUHAG', whereas, defendant is selling the goods under the trademark 'SHILPA'. Defendant is threatening the plaintiff to stop trading under the trademark 'SUPREME SUHAG' failing which, defendant would institute legal proceedings against the plaintiff. According to the plaintiff, these threats of instituting legal proceedings are groundless, misconceived and malicious as plaintiff has a right to do trade under the trademark 'SUPREME SUHAG' and does not infringe or violate any of the rights of the defendant, even under the Trademark Act or Copyright Act.
2. The averments made in the plaint are that the plaintiff is the sole proprietor of M/s. Supreme Suhag Sticker Bindi and is carrying on the business of manufacturing and marketing of 'Sticker Bindi' under the trademark/label 'SUPREME SUHAG' since 1986. He has also applied for registration of this trademark on 13.2.2002 in Class 3 which application is pending before the Registrar of Trade Marks. Similar application for registration under the Copyright Act moved by the plaintiff is also pending for registration. It is alleged that the plaintiff has given wide publicity to his trademark/label 'SUPREME SUHAG' through various modes of publicity and the said product has acquired excellent goodwill and reputation in the market. The trademark/label 'SUPREME SUHAG' of the plaintiff is now well known throughout India for its excellency and high quality. This trademark is represented in a popular artistic design and colour pattern with the device of a lady, who is the wife of the plaintiff. The photograph of the said lady is placed in the shape of a circle having the black colour background. The hair of the lady is black. She is wearing a Saree and Blouse of green colour. She is wearing a home-made neckless. The said label is having some descriptive matter such as hundred percent extra and clinically tested adhesive. Another side of the label contains the trademark/label 'SUPREME SUHAG KUMKUM' and device of Bindis. The name of the firm is also appearing on the said label.
3. The defendant, who is carrying on the business of manufacturing and trading of Bindis under the trademark/label 'SHILPA' allegedly since 1987, issued notice to the plaintiff on 8.8.2002 through its attorney alleging that the use of trademark 'SUPREME SUHAG' by the plaintiff amounted to infringement of defendant's trademark 'SHILPA' and, Therefore, plaintiff is asked to desist from using the same. In these circumstances, the present suit is filed with the following prayers:
(a) the defendant and its representatives may please be permanently restrained from making groundless threats of legal proceedings against the plaintiff and its representatives by a decree of permanent injunction.
(b) a decree be made to the effect that the threats are unjustified and groundless and that the alleged infringement of the trade mark/label and copyright to with threats relate are not infect and infringement of any legal right of the present defendant.
(c) any other relief which this Hon'ble Court may deem fit and proper in the circumstances of the case may also be passed in favor of the plaintiff and against the present defendant.
(d) cost of the suit may also be awarded to the plaintiff.
4. Defendant was served with the summons for 29th July, 2003. Nobody put in appearance on behalf of the defendant and, Therefore, by order dated 29th July, 2003, the defendant was proceeded ex-parte. plaintiff was directed to file affidavit by way of evidence. After the affidavit was filed by the plaintiff, the same was taken on record vide order dated 19th May, 2005, and the documents
