A plaintiff must prove distinctiveness and territorial jurisdiction to succeed in trademark infringement and passing off claims, which were not established in this case.

JUDGMENT :

AMIT BANSAL, J.

1. By way of the present judgment, I shall decide the suit captioned above.

2. The present suit has been filed seeking the relief of permanent injunction restraining the defendants from infringement of trademark, copyright and passing off along with other ancillary reliefs.

CASE SET UP IN THE PLAINT

3. The case set up in the plaint is as follows:

3.1 In 1963, Mr. J.B. Gupta adopted the mark ‘DOCTOR BRAND PHENYLE’.

3.2 The plaintiff company, Vikrant Chemico Industries Pvt. Ltd., was incorporated in the year 1972 and is engaged in the business of personal care products, toiletries, pharmaceuticals and chemicals. The plaintiff operates through its head office located in Kanpur, Uttar Pradesh.

3.3 In 1973, Mr. J.B. Gupta was appointed as a director of the plaintiff company. Plaintiff’s Managing Director, Mr. J.B. Gupta had two sons – the younger son, Mr. R.K. Gupta is one of the directors of the plaintiff company, and the elder son, Mr. G.K. Gupta is the defendant no.2 herein.

3.4 It is averred in the plaint that in the same year 1973, the trademark ‘DOCTOR BRAND GERM TROLL’ was adopted by the plaintiff company, which has been used since then for perfumed cleaners.

3.5 In the year 1975, a partnership firm, M/s Shri Gopal Engineering and Chemical Works, was formed in the name of two partners viz., Mr. J.B. Gupta and Mr. G.K. Gupta (defendant no.2).

3.6 In the year 1979, the defendant no.2, Mr. G.K. Gupta, was appointed as a director of the plaintiff company.

3.7 In April, 1981, Mr. R.K. Gupta, also joined the partnership firm, M/s Shri Gopal Engineering and Chemical Works and a partnership deed was signed by three partners, namely Mr. J.B. Gupta and Mr. R.K. Gupta along with the defendant no.2, Mr. G.K. Gupta.

3.8 The said partnership firm applied for and obtained registration for the trademark ‘DOCTOR BRAND PHENYLE’ (device) bearing application number 445392 in class 5 with effect from 8^th November 1985.

3.9 In the same year 1985, Mr. R.K. Gupta was appointed to the Board of Directors of the plaintiff company.

3.10 The plaintiff company obtained registration for the word mark ‘CHEMIST’ bearing registration no. 464944 under class 5, with effect from 22^nd December 1986.

3.11 On 1^st July 1994, the defendant no.1 company was formed and the plaintiff’s current directors as well as defendants no.2 and 3 were appointed to the Board of Directors of the defendant no.1 company.

3.12 On 18^th November 1996, the partnership firm signed an assignment deed transferring complete title, registration and goodwill in the ‘DOCTOR BRAND PHENYLE’ trademark/label to the plaintiff company. Thereafter, in 1997, the defendants no.2 and 3 resigned from the board of directors of the plaintiff company.

3.13 On 3^rd June 1999, the plaintiff company also acquired a copyright registration in respect of the label of ‘DOCTOR BRAND PHENYLE’ vide registration no. A56172/99.

3.14 On 1^st February 2000, the plaintiff company acting through Mr. J.B. Gupta assigned the trademark registration pertaining to the ‘CHEMIST’ mark to the defendant no.1 company.

3.15 At present, under the mark ‘DOCTOR BRAND’, the plaintiff is selling its ‘DOCTOR BRAND PHENYLE’ and ‘DOCTOR BRAND GERM TROLL’ products as well as other products like acid cleaners, window cleaners, naphthalene balls and floor cleaners.

3.16 The plaintiff has filed a C.A. certificate alo