Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2010 Supreme(Mad) 5495

High Court of Judicature at Madras
V. RAMASUBRAMANIAN
Ashok Leyland Limited represented by its General Manager-Legal and Constituted Attorney S. Venkataraman
Versus
Blue Hill Logistics Pvt. Ltd., Bengaluru & Another
O.A.Nos. 1240 & 1241 of 2010 & A.Nos. 6981 & 6982 of 2010 in C.S.No. 979 of 2010
Decided On :Decided On : 21-12-2010

Advocates Appeared:
For the Plaintiff:Arvind P. Datar, Senior Counsel for A.A. Mohan, Advocate.
For the Defendants:P.S. Raman, Senior Counsel for P.V.S. Giridhar, Advocate.

The plaintiff's exclusive right to the use of the trade mark LUXURA in relation to goods under Class 12, and the defendant's use of the similar mark LUXURIA tended to take undue advantage and was detrimental to the reputation of the plaintiff's mark, satisfying the conditions of Section 29(4)(c) of the Trade Marks Act, 1999.

Headnote:
LUXURA - Trademark Infringement - Trade Marks Act, 1999, Section 28(1), Section 29(4) - The court discussed the plaintiff's exclusive right to the use of the trade mark LUXURA in relation to goods under Class 12, the similarity of the defendant's mark LUXURIA, and the reputation of the plaintiff's mark in India. The court found that the defendant's use of the similar mark tended to take undue advantage and was detrimental to the reputation of the plaintiff's mark, satisfying the conditions of Section 29(4)(c). The court also rejected the defendant's defenses based on the generic nature of the word 'luxury' and the distinction between goods and services, and held that the plaintiff had established a prima facie case and that the balance of convenience was in their favor.
Fact of the Case:

The plaintiff, engaged in the business of manufacturing commercial vehicles, registered the trademark LUXURA in 2007 and launched luxury buses under this mark in 2006. The defendant, a transport service provider, adopted a similar mark LUXURIA for their intercity bus services. The plaintiff filed a suit for trademark infringement and passing off, seeking various reliefs including an injunction.
Finding of the Court:

The court found that the plaintiff had established a prima facie case of trademark infringement and passing off, and that the balance of convenience favored the plaintiff. The court also found that the defendant's use of the similar mark LUXURIA tended to take undue advantage and was detrimental to the reputation of the plaintiff's mark, satisfying the conditions of Section 29(4)(c) of the Trade Marks Act, 1999.
Issues: The issues included the plaintiff's exclusive right to the use of the trade mark LUXURA, the similarity of the defendant's mark LUXURIA, the reputation of the plaintiff's mark in India, and the defendant's defenses based on the generic nature of the word 'luxury' and the distinction between goods and services.
Ratio Decidendi: The court held that the plaintiff had established a prima facie case of trademark infringement and passing off, and that the balance of convenience favored the plaintiff. The court also found that the defendant's use of the similar mark LUXURIA tended to take undue advantage and was detrimental to the reputation of the plaintiff's mark, satisfying the conditions of Section 29(4)(c) of the Trade Marks Act, 1999.
Final Decision: Both the applications for injunction were allowed, and the applications for vacating the injunction were dismissed. There was no order as to costs.

Judgment :

1. Pending suit for permanent injunction restraining the defendants from committing infringement of the plaintiffs registered trademark LUXURA" and from passing off and for various consequential reliefs, the plaintiff filed two applications for interim injunction in O.A.Nos.1240 and 1241 of 2010. The prayer in OA.No.1240 of 2010 was for the grant of an interim order of injunction restraining the defendants from committing infringement and the prayer in O.A. No.1241 of 2010 was for an interim injunction restraining the defendants from passing off.

2. On2.12.2010, when the applications for injunction were moved for ad interim ex parte orders, the first respondent, who was on caveat, took notice through counsel and represented to this Court that the first respondent has already started operating the passenger bus service between Madras and Bangalore using the name "LUXURIA". Therefore, this court passed an interim order, the operative portion of which is found in paragraph 8 and it reads as follows :

"Therefore, I am restricting the order of injunction by restraining the respondents from operating any other buses any where in the country under the trade name LUXURIA or LUXURA until further orders, excepting operating their services from Madras to Bangalore and Bangalore to Madras. Excepting this route where only one bus is being operated, the defendants shall not operate any other luxury buses under the name LUXURA or LUXURIA. It is made clear that if the respondents/defendants are found using their buses under the mark LUXURA or LUXURIA in their routes, excepting the Madras-Bangalore route, the plaintiff shall seek police assistance to seize the said buses."

3. Thereafter, the first respondent has come up with two applications in A.Nos.6981 and 6982 of 2010 for vacating the interim orders of injunction granted in both the above applications. Therefore, all these applications were taken up for hearing and I have heard Mr.Arvind P.Datar, learned Senior Counsel for the plaintiff and Mr.P.S.Raman, learned Senior Counsel for the first defendant.

4. The case of the plaintiff is that it is engaged in the business of manufacture and sale of commercial vehicles for the past more than six decades, offering a world class range of buses, trucks, engines, defence and special application vehicles; that they have seven manufacturing plants and sophisticated modern state of the art research and development facilities; that the plaintiffs vehicles have gained a reputation; that in the course of its business, the plaintiff coined and adopted a trademark known as LUXURA in relation to commercial vehicles in the year 2006; that they also obtained registration of the said mark under trademark No.1552326 dated 20.4.2007 in Class 12; that the plaintiff launched its LUXURA bus during the Auto Expo held in January 2006 at Delhi; that the plaintiff had sold these buses to many customers all over India including transport corporations; that the plaintiff had spent considerable expenditure towards sales and promotion of the LUXURA branded buses through print and electronic media; that in August 2010, the plaintiff came across an article titled Premium Practicality in a magazine to the effect that the second defendant had designed and engineered a business class bus under the trademark LUXURA/ LUXURIA, which was ready for launch; that immediately, the plaintiff issued a legal notice dated 13.8.2010 to the second defendant calling upon them to cease and desist; that the second defendant issued a reply dated 21.8.2010 stating that they do not own the vehicle mentioned in the magazine, but only build bodies for the vehicles of their clients; that however, they refused to disclose the details of the owner for whom the vehicle was designed; that the plaintiff issued a further legal notice dated 1.9.2010, to which, the second defendant issued a reply dated 5.9.2010; that the plaintiff thereafter came to know through enquiries that a company, by name Bl

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