1. The applicant/plaintiff - M/s Banana Brand Private Limited is a private limited company (registered) engaged in the business of Advertising, Building Brand Strategies, Brand Identity, Digital Marketing, Social Media Marketing, Web Branding, Creative Design, Retail Design, Environmental Graphic Design, Photography, Video Production and other allied services.

2. The applicant has adopted a fanciful and arbitrary mark “BANANA”. At the time of its adoption, there was no other mark in the field of operation of the applicant. This mark is used in the service, which has got no connection with banana fruit. Thus, there is no direct or remote connection to the nature of quality of goods. It has registered its logo “BANANA” as a series mark under Classes 35 and 42. The said exercise has been done through multiple applications under Section 15(3) of the Trade Marks Act, 1999. It started using “BANANA” and its logo from the year 2007 onwards. For such service rendered, it bagged various awards and accolades. It acquires permanent clients, such as, Hyatt, Michelin, VBJ, TVS, Sun TV, Daimler, Pricol, Medimix, Chaitanya, Amrutanjan, etc. It also maintains websites to cater to the needs of its clients.

3. The respondents have come into existence in the year 2014 with its brand name as “Bananabandy” through its website operator from the domain name www.bananabandy.com. It offers a platform to creative professionals to interact with each other apart from satisfy the needs of others, who require their services. These include graphic designers, animators, photographers, architects to a fashion designer, industrial designers etc. Any one from these categories can access the website of the respondents, upload their portfolios and their artistic work. Thus, the respondents act as a facilitator and intermediary. It appears that some of the activities of the members of the respondents overlap with that of the applicant, such as brand creation, animation, graphic design and photography.

4. Inter alia alleging that the respondents have been infringing upon the registered mark of the applicant, apart from committing an act of passing off, the present suit in C.S. No. 817 of 2015 has been laid. Pending suit, these two applications, seeking grant of injunction, are also filed.

5. Submissions of the Applicant:

Mr. M.S. Bharath, learned counsel appearing for the applicant, submits that there is no dispute on the registration and prior user of the mark by the applicant. The documents filed would highlight the goodwill and reputation prevailing in the market for the brand name of the applicant. From the documents filed by the respondents, there is a clear overlapping of some of the activities carried on by its members with that of the brand name of the applicant. The word “BANANA” has been adopted as a fanciful and arbitrary name by applying to the field of operation of the applicant. In such a case, Section 29 of the Trade Marks Act, 1999, will have to be pressed into service against the respondents. There is no honest adoption involved on the part of the respondents. There is no search done before adoption leading to inference qua intention. The name is not generic or descriptive, especially, when adoption is in the different field. The respondents, having filed their mark applications for their alleged trade mark “BANANA BANDY”, it does not lie in its mouth to contend to the contrary that the name adopted and registered by the applicant is generic or descriptive. Thus, the respondents cannot be allowed to approbate and reprobate. The mere fact that the applicant has not proceeded against few others who may infringe the mark of the applicant cannot be a ground to escape the rigour of Section 29 of the Trade Marks Act, 1999. Even an innocent adoption by the respondents cannot be a defence. Neither an actual damage nor confusion is required. What is required is a mere likelihood. The reason sought to be assigned by the respondents is only an after-thou