A plaintiff can obtain an injunction against a defendant's unauthorized use of a trademark even on dissimilar goods if the plaintiff's mark has a reputation and the defendant's use takes unfair advantage.

JUDGMENT (Oral)

(Video-Conferencing)

IA 5970/2021 (Order XXXIX Rules 1 and 2 CPC) in CS(COMM) 207/2021

1. Defendant Nos. 1 and 2, who ought to be the main contesting defendants in this matter, have repeatedly remained absent.

2. By order dated 4th May, 2021, I had injuncted Defendant Nos. 1 and 2 from using the impugned "BEARDO" mark on goods in respect of which they did not hold valid and subsisting registrations and in respect of which, on the other hand, valid registrations were held by the plaintiff. The plaintiff holds valid registrations of the word mark "BEARDO" as well as the device mark, in conjunction with the picture of a bearded gentleman who bears an uncanny resemblance to Herge's Captain Haddock. The plaintiff holds 18 registrations for the said device mark and word mark in as many as eight Classes, which have been enlisted in a tabular fashion in para 8 of the plaint. Among these is the registration of the work mark "BEARDO", in Class 3 in respect of "Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, beard wash, beard balm, beard and hair pomade, beard & hair colour, mustache, beard & hair wax & cream, oils, shampoos and conditioners, face scrubs, mask & clay hair scrubs, mask & clay, beard & hair & face spa oils, scrubs, cream, lotions, spf creams, skin care and body care items, after shave and pre shave lotions and preparations, body gel and shower gels, beard oil, face wash, shampoo, soaps, perfumery, essential oils, cosmetics preferably hair oil, lotion, cream, gel for beard, and dentifrices".

3. As noted hereinabove, there is no response by the defendants to the present application, despite notice having been issued as far back as on 4th May, 2021.

4. Mr. Sindhwani has pressed for extending the interim relief granted to the plaintiff also to cover goods in respect of which Defendant Nos. 1 and 2 hold valid registrations. To support this prayer, Mr. Sindhwani submits that the registration granted to Defendant No. 1 in respect of mark "BEARDO", even in respect of Classes 7 and 11, is invalid and that rectification application, preferred by the plaintiff to strike off the said marks from the register of trademarks, are presently pending before the Registry of Trademarks. In such circumstances, he submits, relying on the judgment of a Division Bench of this Court in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd., 2014(60) PTC 51 (DEL), that an action for infringement can lie even against such registered trademark.

5. A reading of the decision in Raj Kumar Prasad (supra) bears out the submission of Mr. Sindhwani. This Court has, in the said decision, counterbalanced Section 28(3) of the Trademarks Act, 1999 ("the Act", in short), which Section 28(1) and Section 124(1) and (5) thereof, to hold that, where invalidity of the impugned mark of the defendants is pleaded by the plaintiff, the mere fact that the impugned mark happens to be registered cannot inhibit the Court from injuncting its further use. Incidentally, in Raj Kumar Prasad (supra), as well as the present case, the plaintiff has instituted proceedings before the Registry of Trademarks, seeking rectification of the register to remove the impugned marks of the defendants therefrom. For ready reference, paras 1, 7, 15 and 18 of the report in Raj Kumar Prasad (supra) may be reproduced, thus:

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