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IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Narula, J.
Campus Activewear Limited – Appellant
Versus
Rama Shankar Garg & Ors. – Respondents
CS(COMM) 387 of 2022
Decided On : 07-03-2023
Trademark Infringement - CAMPUS - Section 151 of CPC - [Section 34 of the Trademarks Act, 1999, Section 11 of the Act] - The court discussed the conflicting trademarks 'CAMPUS' and 'CAMPS' and their formative versions, and the legal provisions related to prior use, honest adoption, delay, and acquiescence. The court found that the Plaintiff failed to establish a prima facie case for passing off, and the balance of convenience did not lie in their favor. The Defendants were restrained from using certain marks pending the suit.
Fact of the Case:
The Plaintiff, a footwear manufacturer, sought an interlocutory injunction against the Defendants for using the mark 'CAMPS', alleging trademark infringement and passing off. The Defendants claimed prior use and argued that the Plaintiff's registration was on a proposed-to-be-used basis.
Finding of the Court:
The Court found that the Plaintiff failed to establish a prima facie case for passing off, and the balance of convenience did not lie in their favor. The Defendants were restrained from using certain marks pending the suit.
Issues: The issues included prior use, honest adoption, delay, and acquiescence in the use of conflicting trademarks.
Ratio Decidendi: The court emphasized the importance of establishing prior use in trademark disputes and considered the principles of honest adoption, delay, and acquiescence in determining the rights of the parties.
Final Decision: The application for interlocutory injunction was dismissed, but the Defendants were restrained from using certain marks pending the suit.
JUDGMENT
Sanjeev Narula, J.
I.A. No. 8998/2022 (under Order XXXIX Rule 1 and 2 r/w Section 151 of CPC for ad-interim injunction)
1. Plaintiff, the registered proprietor of "CAMPUS"/"[IMG]"/"[IMG]"/"[IMG]"/"CAMP" and other formative versions thereof [hereinafter collectively, "Plaintiff's registered marks], is into the business of manufacturing wide-range of footwear, which are sold under the afore-said marks. Their grievance arises from Defendants' use of the registered mark "CAMPS", and its formative mark "[IMG]" [hereinafter collectively, "impugned marks"], which are also used in respect of footwear.
2. The suit is proceeding towards trial due to parties' inability to reach a settlement. Thus, through this judgement, the Court will determine Plaintiff's request for grant of an interlocutory injunction, pending final adjudication.
3. Let us first give a brief introduction to the parties as well as their respective reasons for selecting the conflicting trademarks, as enumerated in the pleadings and accompanying documents presented before Court. Plaintiff's predecessor-in-title adopted "CAMPUS" in 1990, and variations of the logos "[IMG]"/"[IMG]"/"[IMG]", in 1997. The rights in said marks have been assigned to the Plaintiff and necessary formalities for change of name in the records of Trademarks Registry have also been initiated. Details of registration of Plaintiff's registered marks have been set out in paragraph No. 10 of the plaint. In addition, Plaintiff also holds design registrations for "[IMG]", "[IMG]" and "[IMG]" logos.
4. Defendant No. 1 - Mr. Rama Shankar Garg is the sole proprietor of Defendant No. 2 - M/s Baba Footwear and the registered owner of the mark "CAMPS",1[Under application No.:1053648.] which, along with the device/logo "[IMG]", is used on footwear manufactured by them. Defendants No. 1 and 2 adopted the mark "CAMPS" in 1980. Later, from 1996, they started using "CAMPS" in a stylized manner viz. "[IMG]", which was devised by using the first letter of the name of Mr. Rama Shankar Garg in Devnagri script - "[IMG]" and placing it creatively over the word "CAMPS". Defendant No. 3 is impleaded as a dealer of the impugned goods.
PLAINTIFF'S CONTENTIONS
5. Mr. Kirti Uppal, Senior Counsel for Plaintiff, argued that Plaintiff's registered marks have been in continuous commercial use since 1984 and have acquired substantial goodwill. Plaintiff has about 20,000 retail outlets across India and also conducts online business operations through their website. Apart from domestic registrations, Plaintiff has secured protection in several other countries and thus, their registered marks possess all traits of a well-known trademark. Plaintiff's earliest registration for mark "CAMPUS" relates back to 12th November, 1990.2[Under application No. 539806.] On the other hand, Defendants No. 1 and 2 obtained registration of the impugned mark only in 2001, i.e., much later to the Plaintiff. Defendants No. 1 and 2 have emulated Plaintiff's original and unique logo, get-up/trade dress as also footwear designs which has tarnished Plaintiff's image and brand equity. Mr. Uppal highlighted the striking similarities in the structure and pronunciation of "CAMPUS" and "CAMPS" and argued that the impugned marks are used in identical colour with reverse red double-tick on top of the letter `M' ["[IMG]"] only to ride on Plaintiff's goodwill. Since the parties are in the same business, there is a strong likelihood of potential customers being confused and misled into believing that impugned goods are associated with or have a nexus in the form of franchise arrangements, with the Plaintiff.3[Plaintiff has placed reliance on following judgements:
(a) Ruston and Hornsby Ltd. v. The Zamindara Engineering Co., (1969) 2 SCC 727.
(b) Audioplus v. Manoj Nagar, dated 19th March, 2021 in CS(COMM) 193/2020.
(c) Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.
(d) Sun Pharmaceutical Industries Ltd. and Ors. V. Kinetic Lifescience
The central legal point established in the judgment is the significance of prior use and the principles of honest adoption, delay, and acquiescence in trademark disputes.
The main legal point established in the judgment is that the rights of a registered proprietor, who acquired registration for a mark planned for future utilisation, cannot be nullified by someone who....
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The court affirmed that prior use of a registered trademark provides substantial grounds for an injunction against similar marks, emphasizing deceptive similarity effects on consumer perception.
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 ruled that deceptive similarity between competing marks creates a likelihood of consumer confusion and supports injunction against the infringing party.
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 ruled that despite the plaintiff's prior usage claim, the distinct markets of the parties and lack of confusion led to the dismissal of the injunction request.
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