The Court established the principle of deceptive similarity and the jurisdiction of the Court to grant an ad-interim injunction under the Trade Marks Act, 1999.

JUDGMENT

Manmohan, J.: (Oral)

C.M.Nos.1288-1289/2023

Exemption allowed, subject to all just exceptions.

Accordingly, the applications stand disposed of.

FAO(OS) (COMM) 2/2023 & C.M.No.1287/2023

1. Present appeal has been filed challenging the order dated 4th November, 2022 passed by learned Single Judge in CS (COMM) No.461/2020.

2. Learned counsel for the appellants/defendants states the learned Single Judge has erred in granting interim injunction in favour of the respondent no. 1/plaintiff without appreciating that the appellants are primarily engaged in the field of manufacturing and selling of water closets and ancillary products since 1999. He contends that the appellants' products are completely different from the respondents' products. He emphasises that the two marks in question, namely, CORZA and CORSA, are different and their area of physical operation is also different. He states that while the business of the appellants is confined to the State of Kerala, the respondents/plaintiffs have no presence in Kerala. Therefore, according to him, there is no question of loss of market share or customers being confused.

3. He contends that the appellants and their predecessor have been using the mark since 1999 continuously and bonafidely and due to such extensive use, the appellants hold goodwill and reputation for their trademark CORZA. He further states that though the respondent no. 1 claims to have started using the name since 1998, yet they failed to produce any document to sustain their claim.

4. Learned counsel for the appellants lastly submits that as the appellants are registered owner of the mark CORZA in Class 19, the learned Single Judge in view of Sections 28(3) and 30(2)(e) of the Trade Marks Act, 1999 could not have confined the operations of the appellants to the State of Kerala and that too with regard to Class 19 category goods.

5. Having perused the paper book, this Court is in agreement with the prima facie view of the learned Single Judge that the two marks in question are phonetically, structurally and visually similar. This Court is also in agreement with the prima facie finding of the learned Single Judge that the respondent no.1/plaintiff no.1 is the prior user of the mark in question as it has produced documents showing use of the mark CORSA since 2009, whereas the appellants have placed on record documents showing use of their mark CORZA only since 2014.

6. The contention of the appellants that they are confined to the State of Kerala and that too with regard to Class 19 goods is not correct as the prime reason for institution of the suit by the respondents before the learned Single Judge was that on their Facebook page, the appellants had themselves stated that they would be shortly expanding their business to sanitary wares, which would have included respondents/plaintiffs' products.

7. Further, the consistent view taken by this Court is that the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity and the Courts are competent to grant an ad-interim injunction. The Division Bench of this Court in Raj Kumar Prasad & Anr. Vs. Abbott Healthcare (P) Ltd., 2014 SCC OnLine Del 7708 has held as under:

"1. The question: Whether the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity keeps on arising in this Court. The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the defendant can be restrained from marketing goods under the offending trademark. The question has arisen once again in the suit filed by Abbott Healthcare Pvt. Ltd. and the antagonists are Raj Kumar Prasad and Alicon Pharmaceuticals Pvt. Ltd.

xxx xxx xxx

15. It is no doubt true that a reading of sub-Section 1 of Section 28 of the Trademarks Act, 1999 would evidence a legal right vested in the registered proprietor of a trademar