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IN THE HIGH COURT OF DELHI AT NEW DELHI
Vibhu Bakhru, Amit Mahajan, JJ.
Peps Industries Private Limited - Appellant
Versus
Kurlon Limited - Respondent
FAO(OS) (Comm) 94 of 2020 & CM No. 18937 of 2020
Decided On : 07-10-2022
NO TURN - Trademark Dispute - Trade Marks Act, 1999, Section 34 - The judgment discusses the application of Section 34 of the Trade Marks Act, 1999, and the protection of descriptive marks. The court held that the appellant was entitled to an ad interim injunction restraining the defendant from using the trademark 'NO TURN' as the defendant's defence under Section 34 was not established. The court also emphasized that a descriptive mark can be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or source.
Fact of the Case:
The appellant, Peps Industries Private Limited, filed a suit seeking permanent injunction against Kurlon Limited from using the mark 'NO TURN' in relation to mattresses. The court dismissed the application under Order XXXIX Rule 1 & 2 of CPC on the ground that the mark 'NO TURN' is a descriptive mark, leading to the present appeal.
Finding of the Court:
The court found that the appellant was entitled to an ad interim injunction as the defendant's defence under Section 34 of the Trade Marks Act, 1999 was not established. The court also held that a descriptive mark can be entitled to protection if it has assumed a secondary meaning identifying it with a particular product or source.
Issues: The issues before the court included the validity of the registration of the mark 'NO TURN', the applicability of Section 34 of the Trade Marks Act, 1999, and whether a descriptive mark can be entitled to protection.
Ratio Decidendi: The court emphasized that a party cannot approbate and reprobate at the same time, and once a mark has been registered, it is accepted as prima facie valid unless an objection is raised questioning its validity and is adjudicated by the court. The court also highlighted that a descriptive mark can be entitled to protection if it has assumed a secondary meaning identifying it with a particular product or source.
Final Decision: The present appeal was allowed, and the impugned judgment was set aside. Kurlon Limited was restrained from using the mark 'NO TURN' or any other trademark deceptively similar thereto until the disposal of the suit. The parties were left to bear their own costs.
Certainly. Based on the provided legal document, here are the key points summarized:
The appellant, Peps Industries Private Limited (PEPS), filed a suit seeking an injunction against Kurlon Limited for using the trademark "NO TURN" on mattresses and related products. PEPS's mark was registered in its favor and has been in continuous use since 2008 (!) (!) .
Kurlon Limited claimed prior use of the mark "NO TURN" since 2007 and defended itself under Section 34 of the Trade Marks Act, 1999, which allows a prior user to continue using a mark despite subsequent registration by another party (!) (!) .
The initial court dismissed PEPS's application for interim relief, holding that "NO TURN" was a descriptive mark related to mattresses, and there was no evidence that it had acquired secondary meaning or distinctiveness to qualify for protection as a distinctive mark (!) .
PEPS argued that the court erred in dismissing the injunction, emphasizing that Kurlon had not challenged the validity of PEPS’s registration or raised the issue of descriptiveness during proceedings. They contended that the mark "NO TURN" is not generic or descriptive and that its registration was valid (!) (!) (!) .
Kurlon’s defense was based on prior use and the claim that "NO TURN" is a coined word, inherently distinctive, and therefore entitled to protection. They also argued that the mark could be descriptive if it had acquired secondary meaning, but they had not raised this issue earlier in the proceedings (!) (!) .
The court found that Kurlon was estopped from raising the argument that "NO TURN" was descriptive because it had previously claimed the mark was distinctive and had not challenged its validity during registration or in the initial proceedings (!) (!) .
The court emphasized that issues not raised by the parties cannot be decided by the court, and the scope of the pleadings limits the issues for determination. It held that the court should not decide on the descriptiveness of the mark if it was not specifically contested by the defendant (!) (!) .
The court also clarified that once a mark is registered, it is prima facie valid unless challenged, and the validity cannot be questioned suo motu without proper grounds. No such challenge was made by Kurlon during the proceedings (!) (!) .
The court recognized that even descriptive marks can be protected if they have acquired secondary meaning through long-term use, but in this case, such evidence was not established or argued (!) (!) .
Ultimately, the court concluded that the defendant’s defense under prior use was not sufficiently established, and the registration of PEPS’s mark was valid. Therefore, PEPS was entitled to an interim injunction restraining Kurlon from using the "NO TURN" mark or any deceptively similar mark until the final disposal of the suit (!) (!) .
The appeal was allowed, and the previous dismissal of the injunction was set aside. Kurlon was restrained from using the "NO TURN" mark or any similar trademark pending the outcome of the case, with parties bearing their own costs (!) (!) .
Would you like a further analysis or specific legal advice based on these points?
JUDGMENT
Amit Mahajan, J. - The appellant, Peps Industries Private Limited (hereafter 'PEPS') has filed the present appeal impugning the judgment dated 16.03.2020 (hereafter 'the impugned judgment') passed by the learned Single Judge of this Court in IA No. 4871/2019 & IA No. 6715/2019 in CS (Comm) No. 174/2019 dismissing the application filed by PEPS under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908 (CPC).
Brief Facts
2. PEPS claims that it has been using the mark 'NO TURN' in respect of mattresses, wall beds etc. since 15.01.2008. The mark 'NO TURN' is registered in favour of PEPS by a registration dated 04.02.2011 in respect of goods falling under Class 20 for mattresses, wall beds, adjustable beds, coir mats, spring mattresses, sofas, pillows, cushions, seats and other related products.
3. Kurlon Limited (hereafter 'KURLON') is also using the same mark 'NO TURN' in respect of mattresses and claims to be using it since the year 2007. PEPS, on becoming aware about the use of the same mark 'NO TURN' on the same product by KURLON, filed a suit seeking permanent injunction against KURLON from the use of the said mark.
4. KURLON took a stand that they have been using the mark 'NO TURN' from prior in time than the PEPS. It claimed a defence under Section 34 of the Trade Marks Act, 1999 which does not entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with the said registered trademark, if the said person has been continuously using the mark from a date prior to the user / registration of the trademark.
5. For the ease of reference, Section 34 of the Trade Marks Act, 1999 is reproduced as under:
34. Saving for vested right.-- Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--
(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or
(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.'
6. The learned Single Judge, vide impugned judgment, dismissed the application under Order XXXIX Rule 1 & 2 of CPC on the ground that the mark 'NO TURN' is a descriptive mark in relation to its use on mattresses'. Dismissal of the application under Order XXXIX Rules 1 & 2, CPC led to filing of the present appeal.
7. The learned Single Judge held as under:
'21. From the facts as noted above, it is thus evident that the plaintiff has a registered trade mark 'NO TURN' in its favour, the mark 'NO TURN' is being used by the plaintiff as a trade mark. The plaintiff has been in continuous use of this trade mark 'NO TURN' since 15th January, 2008. Defendant is the prior user of the mark since the year 2007 however since the use of the mark by the defendant is intermittent and not voluminous so as to establish the defence under Section 34 of the Trade Marks Act. However, the plaintiff would still not be entitled to the relief of injunction for the reason the mark 'NO TURN' is a descriptive mark. The plaintiff has placed no material on record to show that on the date of application or even on the date of registration plaintiff's trademark 'NO TURN' had acquired the distinctiveness to achieve the status of a well known mark. Hence, no interim injunction is granted in favour of the plaintiff. Consequently, IA 4871/2019 is dismissed and IA 6715/2019 is disposed of.'
AI
Appellate court interferes with trial court's refusal of interim injunction in passing off where findings on mark as generic lack pleadings support, plaintiff shows prior use/secondary meaning, and d....
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
The distinctiveness of a trademark, statutory defenses, and the descriptive use of trademarks were central to the court's decision.
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
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