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IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Astral Ltd – Appellant
Versus
Ashirvad Pipes Pvt. Ltd. – Respondent
CS(COMM) 309 of 2022, I.A. 8856 of 2022(O-XI R-1(4) of CPC), I.A. 9750 of 2022(O-XI R-1(10) of CC Act), I.A. 12468 of 2022(u of s 124 of Trade Mark Act) and I.A. 19036 of 2022(O-XI R-1(4) of CPC)
Decided On : 23-02-2023
Trademark - Interim Injunction - Code of Civil Procedure, 1908 - [CPVC PRO] - Trademark Infringement - Section 9 of the Trade Marks Act, 1999 - [3298112, 3298113, 3298114, 3298116, 3298117, 3298118, 3298119, 3298120, 3298121, 3298122, 3355646, 3355647, 3355648, 3355650, 3355651, 4484822, 4484823] - The court analyzed the competing marks of the parties and the trademark registrations granted to the plaintiff. It found that the plaintiff cannot claim monopoly over the words 'CPVC' or 'PRO' either individually or in conjunction with each other/other words and these registrations cannot be relied upon by the plaintiff in the present suit for infringement. The court also held that the word 'PRO' is laudatory and non-distinctive, and the plaintiff failed to establish acquired distinctiveness or goodwill in the term 'CPVC PRO'. Therefore, the plaintiff failed to make out a prima facie case for grant of interim injunction.
Fact of the Case:
The plaintiff, a company engaged in manufacturing and selling pipes and fittings, filed a suit seeking a permanent injunction against the defendant for using the mark 'CPVC FLOWPRO', which the plaintiff claimed was deceptively similar to its mark 'CPVC PRO'. The defendant objected to the plaintiff's claim, arguing that the word 'PRO' is generic and descriptive, and cannot be monopolized by the plaintiff.
Finding of the Court:
The court found that the plaintiff failed to establish a prima facie case for grant of interim injunction as it could not claim monopoly over the words 'CPVC' or 'PRO' and failed to establish acquired distinctiveness or goodwill in the term 'CPVC PRO'. The court also held that the word 'PRO' is laudatory and non-distinctive, and the plaintiff's trademark registrations cannot be relied upon in the present suit for infringement.
Issues: 1. Whether the plaintiff could claim monopoly over the words 'CPVC' or 'PRO' in the trademark 'CPVC PRO'? 2. Whether the plaintiff established acquired distinctiveness or goodwill in the term 'CPVC PRO'? 3. Whether the defendant's use of the mark 'CPVC FLOWPRO' constituted trademark infringement?
Ratio Decidendi: The court held that the plaintiff failed to establish a prima facie case for grant of interim injunction as it could not claim monopoly over the words 'CPVC' or 'PRO' and failed to establish acquired distinctiveness or goodwill in the term 'CPVC PRO'. The court also held that the word 'PRO' is laudatory and non-distinctive, and the plaintiff's trademark registrations cannot be relied upon in the present suit for infringement.
Final Decision: Accordingly, the court dismissed the application filed by the plaintiff for interim injunction under Order XXXIX Rules 1 and 2 of the CPC.
JUDGMENT
Amit Bansal, J.
I.A. 7334/2022 (O-XXXIX R-1 & 2 of the CPC)
1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for grant of interim injunction.
PROCEEDINGS IN THE SUIT
2. Summons in the suit was issued on 11th May, 2022. However, no ad interim injunction order was passed in favour of the plaintiff. Thereafter, the matter was listed on various dates and pleadings have been completed in the suit as well as the present application. I.A. 7334/2022 was heard on 3rd February, 2023, when the judgment was reserved and counsels were given time to file written submissions. Both the sides have filed their respective brief notes of submissions.
CASE SET UP IN THE PLAINT
3. The case set up in the plaint is as under:
3.1. Plaintiff company was incorporated on 25th March, 1996 as a private limited company and in the year 2006, the plaintiff company was converted into a public limited company.
3.2. Plaintiff company is engaged in the business of manufacturing, distributing and selling of high-quality pipes, parts and fittings for use in plumbing, sewage, drainage, fire protection and the like. The plaintiff company has manufacturing facilities at six locations in India and has received various awards and accolades in respect of its various products.
3.3. In the year 2004, the plaintiff company became the first entity to launch Chlorinated Polyvinyl Chloride (CPVC) piping systems in India.
3.4. The plaintiff has filed and obtained various registrations in respect of the mark `CPVC PRO' and `CPVC PRO' formative trademarks, which are detailed in paragraph 15 of the plaint.
3.5. Some of the registrations of the plaintiff have a disclaimer that no exclusive rights have been granted in respect of the words `CPVC PRO' and `CPVC CHEM PRO'. However, the subsequent registrations do not have this condition. Some of the applications filed on behalf of the plaintiff in respect of `CPVC PRO' and `CPVC PRO' formative marks have been objected to.
3.6. Plaintiff has engaged various celebrities and superstars from time to time to advertise their products under the aforesaid trademarks.
3.7. The statement in respect of domestic sales and exports of the plaintiff have been provided in paragraph 20 of the plaint. In the year 2021-2022, the sales of the plaintiff in respect of the trademarks `CPVC PRO' was around Rs.954 crores.
3.8. On account of its superior quality, continuous and extensive use, and large scale publicity, the plaintiff's trademark `CPVC PRO' has acquired immense reputation and goodwill in the market. Accordingly, the plaintiff claims both statutory as well as common law rights in the trademark `CPVC PRO'.
3.9. Defendant has also filed various trademark applications in respect of similar products which are pending as on date. The grievance of the plaintiff is with regard to the impugned mark `CPVC FLOWPRO', wherein `CPVC' and `PRO' are being used together and the same is similar to the trademark of the plaintiff, `CPVC PRO'.
3.10. The trademark application of the defendant was filed in January, 2021, on a `proposed to be used basis', whereas the plaintiff has been using the `CPVC PRO' marks since 2016. In this regard, invoices have been placed on record by the plaintiff.
3.11. The adoption of the trademark `CPVC FLOWPRO' by the defendant is dishonest and an attempt to ride on the goodwill and reputation of the plaintiff.
3.12. A cease and desist notice dated 17th December, 2021 was issued by the plaintiff to the defendant. The aforesaid notice was replied to by the defendant.
3.13. Accordingly, the present suit was filed seeking a decree of permanent injunction along with other ancillary reliefs.
CASE SET UP IN THE WRITTEN STATEMENT
4. The case set out in the written statement is as under:
4.1. The plaintiff does not have any grievance with the use of the word `CPVC' by the defendant as it is an abbreviation of the ma
The word 'PRO' is laudatory and non-distinctive, and cannot be monopolized by a party unless it has acquired distinctive character or well-known status.
The distinctiveness of a trademark, statutory defenses, and the descriptive use of trademarks were central to the court's decision.
The court upheld the exclusive rights of a registered trademark owner against a similar mark that causes consumer confusion.
The court emphasized the importance of trademark registration, prior use, distinctiveness, and the balance of convenience in deciding on interim injunctions.
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
On a plain reading of Section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he is permitted to apply to register ....
On a plain reading of Section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to exclusive use of any part thereof separately, he is permitted to apply to register ....
In trademark law, the likelihood of confusion rather than actual confusion is sufficient to grant injunctive relief, especially when the Plaintiff has established prior use and goodwill.
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
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