2011 Supreme(Mad) 2501

2011 (4) CTC 417
High Court of Judicature at Madras
R. BANUMATHI & V. PERIYA KARUPPIAH
Blue Hill Logistics Private Ltd.
Versus
Ashok Leyland Limited, Rep. by its General Manager & Another
O.S.A.NOs.7 & 8 of 2011
Decided On: 05-05-2011

The exclusive right to the use of a trade mark is limited to the goods or services in respect of which the trade mark is registered falling in one or more of the Classes in the Fourth Schedule.

Headnote:

LUXURA - TRADE MARK - INFRINGEMENT - SUIT FOR - REGISTRATION OF TRADE MARK - EXCLUSIVE RIGHT TO USE THE TRADE MARK - INFRINGEMENT OF REGISTERED TRADE MARK - CONDITIONS - SIMILARITY OF GOODS OR SERVICES - DISTINCTION BETWEEN GOODS AND SERVICES - SIMILARITY OF MARKS - REPUTATION OF THE REGISTERED TRADE MARK - USE OF THE MARK WITHOUT DUE CAUSE - UNFAIR ADVANTAGE OR DETRIMENTAL TO THE DISTINCTIVE CHARACTER OR REPUTE OF THE REGISTERED TRADE MARK - CONDUCT OF THE DEFENDANT - GRANT OF INJUNCTION - DISCRETION OF THE COURT - INTERFERENCE BY APPELLATE COURT.

Fact of the Case:

Plaintiff, engaged in the business of manufacture and sale of commercial vehicles, launched several established brands such as "LYNX, CHEETAH, VIKING, CRUISER, PANTHER" etc. In the course of its business, Plaintiff coined and adopted a trade mark "LUXURA" in the year 2006 in relation to the commercial vehicles/comfort buses equipped with distinctive features catering the needs to the travelling passengers to have comforts and luxurious travel. Plaintiff obtained registration of the said mark "LUXURA" under trade mark No.1552326 dated 20.04.2007 in Class 12 relating to Motor Vehicle Chassis, Motors for land Vehicles, Apparatus for Locomotion by land including Commercial Vehicles, Couplings, Motor parts and fittings. Plaintiff launched its "LUXURA" bus during the Auto Expo held in January, 2006 at New Delhi. Plaintiff sold "LUXURA" bus to many customers all over India including the Transport Corporations. Plaintiff had spent a considerable expenditure towards sales and promotion of "LUXURA" branded buses through print and electronic media. In August 2010, Plaintiff came to know that the 2nd Defendant-Dilip Chhabria Design Private Limited had designed and engineered a business class bus under the mark "LUXURIA". Plaintiff issued a legal notice dated 13.08.2010 to the 2nd Defendant calling upon them to "cease and desist" using the infringing mark "LUXURIA". 2nd Defendant issued a reply dated 21.08.2010 stating that they do not own the vehicle mentioned in the magazine "Premium Practicality" and that they build bodies for the vehicles of their clients. 2nd Defendant refused to disclose the details of the owner for whom the vehicle was designed. There was exchange of second notice between the Plaintiff and the 2nd Defendant. Through enquiries, Plaintiff came to know that Blue Hill Foods and Retail Private Limited, Bangalore was proposing to operate bus services under the trade mark "LUXURIA" and therefore, Plaintiff issued "cease and desist" notice dated 20.09.2010 to the said company. Blue Hill Foods and Retail Private Limited, Bangalore issued notice dated 29.09.2010 stating that they are not concerned with the manufacturing of vehicles, but engaged in the business of running supermarkets. In the mean time, 1st Defendant company Blue Hill Logistics Private Limited served a caveat upon the Plaintiff which made it clear that Blue Hill Logistics Private Limited of Blue Hill Group was proposing to market the buses under the trade mark "LUXURIA" and therefore, Plaintiff issued a "cease and desist" notice dated 03.11.2010 to 1st Defendant-Blue Hill Logistics Private Limited. Inspite of receiving the notice, 1st Defendant-Blue Hill Logistics Private Limited proceeded with the launch of bus services on 12.11.2010 under the trade name "LUXURIA" and thereafter issued reply dated 15.11.2010 refusing to comply with the demand made by the Plaintiff. Thereafter, Plaintiff filed the suit C.S.No.979 of 2010 for infringement and passing off and for various consequential reliefs such as rendition of accounts, surrender and destruction of all offending materials and for compensatory and punitive damages to the tune of Rs.1 crore.

Finding of the Court:

1. By virtue of registration of the mark "LUXURA" in Class-12, Plaintiff has got exclusive right to use the trade mark "LUXURA" and consequently, an action for infringement is maintainable. 2. 1st Defendant's user of the mark "LUXURIA" is in respect of Classes 39 and 35 used in relation to the services which are similar and whether such user is infringement under Section 29(1) of Trade Marks Act. 3. Whether the user of trade mark "LUXURIA" in respect of services under Classes 39 and 35 are not similar to Plaintiff's goods and whether the alleged user is infringement under Section 29(4) of Trade Marks Act. 4. Whether the learned single Judge was right in saying that Plaintiff has established the ingredients of Section 29(4) of Trade Marks Act.

Issues: 1. Whether Plaintiff has got exclusive right to use the trade mark "LUXURA" and consequently, whether an action for infringement is maintainable? 2. Whether 1st Defendant's user of the mark "LUXURIA" is in respect of Classes 39 and 35 used in relation to the services which are similar and whether such user is infringement under Section 29(1) of Trade Marks Act? 3. Whether the user of trade mark "LUXURIA" in respect of services under Classes 39 and 35 are not similar to Plaintiff's goods and whether the alleged user is infringement under Section 29(4) of Trade Marks Act? 4. Whether the learned single Judge was right in saying that Plaintiff has established the ingredients of Section 29(4) of Trade Marks Act?

Ratio Decidendi: 1. When a person gets his trade mark registered, he acquires valuable right by reason of such registration and registration of his trade mark gives him exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered. If there is any invasion of this right by any other person using his trade mark which is the same or deceptively similar to his trade mark he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or account of profits made by the other person. However this right of the owner of the registered trade mark is subject to other provisions contained in the Act. 2. The exclusive right to the use of a trade mark is limited to the goods or services in respect of which the trade mark is registered falling in one or more of the Classes in the Fourth Schedule. 3. Section 29(2) of Trade Marks Act is a general proposition of law. The various circumstances in which the trade mark is infringed are enumerated in sub-sections (2) to (9) of Section 29 of the Act. 4. Section 29(4) postulates that - (a) infringing mark is identical or similar to the registered mark; and (b) such mark is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the infringing mark is without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.

Final Decision: Both the Appeals are dismissed.