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2003 Supreme(Del) 1247
IN THE HIGH COURT OF DELHI
Mahmood Ali Khan, J.
Filex Systems Pvt. Ltd. - Appellant
Versus
Rotomac Pens (Guj.) Pvt. Ltd. - Respondent
IA 7986/03 in S. 1510/03
Decided On : 11-12-2003
For the Appellant : Amarjit Singh.
For the Respondent: M.R. Bhalerao.
Headnote:
SOLO - Trade Mark Infringement - Order 39 Rules 1 and 2 read with Section 151 CPC - [Order 39 Rules 1 and 2, Section 151 CPC] - The court discussed the legal provisions related to passing off, deceptive similarity, and likelihood of confusion in the context of trade mark infringement. The court emphasized the importance of protecting the exclusive rights of a trade mark owner and preventing unfair competition. The decision was influenced by the extensive use and reputation of the trade mark 'SOLO' by the plaintiff, the similarity between the competing marks, and the likelihood of confusion and deception in the minds of consumers and traders.
Fact of the Case:
The plaintiff sought an injunction to restrain the defendant from using the trade mark 'SOLO' in relation to stationery products, alleging trade mark infringement and passing off. The plaintiff claimed exclusive rights to the trade mark 'SOLO' for its stationery items, including pens, and argued that the defendant's use of the identical mark was likely to cause confusion and deception among consumers and traders.
Finding of the Court:
The court found that the plaintiff had established a prima facie case for trade mark infringement and passing off. It held that the defendant's use of the mark 'SOLO' in relation to pens infringed the plaintiff's proprietary rights and constituted unfair trade practice. The court granted the ad-interim injunction in favor of the plaintiff, restraining the defendant from manufacturing, selling, or offering for sale stationery products bearing the mark 'SOLO' or any deceptively similar mark.
Issues: The key issues included the proprietary rights over the trade mark 'SOLO', the likelihood of confusion and deception, and the defendant's use of the mark as a sub-brand. The court also considered the nature of the goods, the class of purchasers, and the mode of purchasing the goods in determining the likelihood of confusion and passing off.
Ratio Decidendi: The court's decision was based on the principles of trade mark infringement, passing off, and deceptive similarity. It emphasized the importance of protecting the exclusive rights of a trade mark owner and preventing unfair competition. The court considered the extensive use and reputation of the trade mark 'SOLO' by the plaintiff, the similarity between the competing marks, and the likelihood of confusion and deception in the minds of consumers and traders.
Final Decision: The court granted the ad-interim injunction in favor of the plaintiff, restraining the defendant from manufacturing, selling, or offering for sale stationery products bearing the mark 'SOLO' or any deceptively similar mark. The court clarified that the observations made in the order were for deciding the interlocutory application and would not influence the decision on the questions involved on merit after trial.
JUDGMENT :
Mahmood Ali Khan, J.-
1. This application has been filed under Order 39 Rules 1 and 2 read with Section 151 CPC for grant of ad interim injunction order restraining the defendant from manufacturing, selling and/or offering for sale, directly or indirectly dealing in stationery products including pens/ball pens/jotter pens or pens of any nature or any other stationery items/goods as may be cognate or allied to the plaintiff's goods or the goods of the same description and/or goods having similar trade channels and/or goods as a dealt with by similar class of traders and purchasers under the mark `SOLO' and/or any other mark which may be identical and/or deceptively similar to the plaintiff's trade mark `SOLO' and/or from doing any other act as is likely to cause confusion and or deception amounting to passing off defendant's goods and/or business as the goods and/or business of the plaintiff.
2. The case of the plaintiff is as follows. The plaintiff Company was incorporated in 28.5.1996 to carry on the business for the manufacture and sale of stationery products. It commenced its business activities in March, 1997. It is manufacturing and selling variety of stationery products including presentation holders and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CM ROM holders and zipper wallets, conference holder, which includes writing pads and pens, office stationery, adhesives, packaging, paper and paper products etc. In September, 1996, the plaintiff adopted the trade mark SOLO in respect of stationery items of its manufacture and sale and has continuously and extensively used the same in the course of trade since March, 1997. The goods as are manufactured and marketed by the plaintiff are of high quality and are identified and recognized as a quality product originating from the plaintiffs source of manufacture. The trade mark SOLO has continuously and extensively been used in the course of trade by the plaintiff ever since 1997 so much so that the trade mark has come about to be exclusively identified and recognized by the purchasing public and the members of the trade with the products of the plaintiff. The plaintiff has acquired an exclusive right to the use of the said trade mark as a proprietor thereof in respect of the stationery products including presentation holders and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CM ROM holders and zipper wallets, conference holder, which includes writing pads and pens, office stationery, adhesives, packaging, paper and paper products and printed publications and/or all other cognate or allied goods or goods of same description. The plaintiff has been marketing writing instruments including pens bearing the trade mark SOLO as a part of its presentation holders, conference holders etc. The plaintiff has filed an application for registration of the trade mark SOLO before the Registrar of Trade Marks, Mumbai on 23.9.1996, which is pending. The plaintiff had been spending substantial amount of money for advertising of the said trade mark and in the year 1997-98, he has spent an amount of Rs. 11.33 lacs, which has increased to Rs. 37.76 lacs during the year 2002-03. It has also sold its goods of the value of Rs. 14 crores since 1997 and has spent Rs. 90 lacs for promotion of its trade mark SOLO. The plaintiff has been participating in trade fairs/exhibitions since 1997 held in New Delhi, Mumbai, Ahmedabad, Chennai, Patna and Hyderabad.
3. The defendant, M/s. Rotomac Pens (Guj.) Private Limited is a Company incorporated under the Indian Companies Act and is engaged in manufacture and sale of inter-alia, stationery products including pens. Its house mark is Rotomac in respect of the goods of its manufacture and sale. With a view to trade upon the reputation of the plaintiff's trade mark SOL
