The use of a well-known trademark by a defendant for similar goods, causing public confusion, constitutes trademark infringement and passing off.

JUDGMENT

Amit Bansal, J. (Oral)

CS(COMM) 21/2018

1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks and copyrights of the plaintiff, passing off their goods as that of the plaintiff's and other ancillary reliefs.

PLEADINGS IN THE PLAINT

2. The case set up by the plaintiff in the plaint is as follows:

2.1. The plaintiff, M/s RPG Enterprises Limited is an Indian industrial conglomerate comprising of over twenty companies in the area of infrastructure, tyres, technology and speciality.

2.2. The plaintiff has been has been using the `RPG' word mark since 1979.

2.3. The plaintiff is the proprietor of the registered trademark `RPG', , and other related marks in Classes 5, 9, 12, 16 and 30 of the Trade Marks Act, 1999. The said marks have come to be exclusively associated with the plaintiff. Details of the trademark registrations of the plaintiff's `RPG' marks have been tabulated in paragraph 5 of the plaint.

2.4. The said marks of the plaintiff are also registered by the plaintiff in various foreign countries, details of which have been provided in paragraph 6 of the plaint.

2.5. The plaintiff's `RPG' marks have acquired the status of well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999, which fact is recognised in the judgment of RPG Enterprises Limited v. Riju Ghoshal and Another, (2022) 90 PTC 312.

2.6. The plaintiff is also the registered copyright owner of the RPG Enterprises Logo (Label) in India and has been using the same since 1987. The aforesaid label was granted registration on 30th June, 1988. The plaintiff also owns the domain names `www.rpggroup.com' and `www.rpg.in'.

2.7. The defendant no. 1, M/s RPG Developers is a company engaged in the selling and renting of properties in various parts of India. The defendant no. 2, Mr. Rampal Goswami, is the director of the defendant company.

2.8. Sometime in August, 2017, the plaintiff came across the infringing activities of the defendants. The defendants are deliberately using the trade name `M/s RPG Developers' with an intent to misrepresent to the public that the defendants are associated with the plaintiff as an associate/joint venture/group company. The defendants have adopted the `RPG' mark and are using the mark .

2.9. The defendants. website mentions various projects using the word mark `RPG' titled as `RPG Sathya Nagar,' `RPG Metro City,' `RPG Vel Nagar,' `RPG Global City,' `RPG Metro City,' `RPG Swarna Boomi,' `RPG Aravindar City' and `RPG Rokkisha Bhoomi'.

2.10. Plaintiff issued cease and desist notices dated 10th August, 2017 to the defendants, inter alia, calling upon the defendants to stop selling/offering for sale their projects under the mark `RPG', recall their finished infringing goods/promotional materials and give an undertaking to the effect that they shall not infringe the marks of the plaintiff in the future. However, despite service, no reply to the said letters has been received by the plaintiff.

3. Accordingly, the plaintiff filed the present suit seeking to restrain the defendants from carrying on their infringing activities.

PROCEEDINGS IN THE SUIT

4. This Court, vide order dated 10th January, 2018 granted an ex parte ad interim injunction in favour of the plaintiff under I.A. 364/2018, retraining the defendants from using the mark `RPG'. The relevant portion of the said order is as under:

"Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiff and balance of convenience is a