2019 Supreme(Mad) 1103

IN THE HIGH COURT OF JUDICATURE AT MADRAS
S. VAIDYANATHAN, J.
Petitioner
Versus
Respondent
Application Nos. 8172 & 8173 of 2018, O.A.Nos. 618 to 620 of 2018 in C.S.No. 433 of 2018
Decided On : 28-06-2019

Headnote:

TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - BALANCE OF CONVENIENCE - IRREPARABLE LOSS - INTERIM INJUNCTION - RECTIFICATION PROCEEDINGS - SECTION 13 OF THE TRADEMARKS ACT, 1999 - SECTION 111 OF THE TRADEMARKS ACT, 1958 - SECTION 124 OF THE TRADEMARKS ACT, 1999 - SECTION 57 OF THE TRADEMARKS ACT, 1999 - SECTION 9, 11, 13 AND 18 OF THE TRADEMARKS ACT, 1999 - ORDER XXXIX RULES 1 AND 2 OF THE CIVIL PROCEDURE CODE, 1908 - APPLICATION FOR LEAVE TO INSTITUTE RECTIFICATION PROCEEDINGS - CONDITIONS FOR GRANT OF INTERIM INJUNCTION - APPLICABILITY OF SECTION 13 OF THE TRADEMARKS ACT, 1999 - SCOPE OF SECTION 111 OF THE TRADEMARKS ACT, 1958 AND SECTION 124 OF THE TRADEMARKS ACT, 1999 - DISTINCTION BETWEEN RECTIFICATION PROCEEDINGS AND SUIT FOR INFRINGEMENT - APPLICABILITY OF SECTION 57 OF THE TRADEMARKS ACT, 1999 - REQUIREMENT OF PRIMA FACIE CASE OF INVALIDITY FOR GRANT OF LEAVE TO INSTITUTE RECTIFICATION PROCEEDINGS - JURISDICTION OF CIVIL COURT AND INTELLECTUAL PROPERTY APPELLATE BOARD - APPLICABILITY OF SECTION 9, 11, 13 AND 18 OF THE TRADEMARKS ACT, 1999 - APPLICABILITY OF ORDER XXXIX RULES 1 AND 2 OF THE CIVIL PROCEDURE CODE, 1908 - CONDITIONS FOR GRANT OF INTERIM INJUNCTION - APPLICABILITY OF SECTION 13 OF THE TRADEMARKS ACT, 1999 - SCOPE OF SECTION 111 OF THE TRADEMARKS ACT, 1958 AND SECTION 124 OF THE TRADEMARKS ACT, 1999 - DISTINCTION BETWEEN RECTIFICATION PROCEEDINGS AND SUIT FOR INFRINGEMENT - APPLICABILITY OF SECTION 57 OF THE TRADEMARKS ACT, 1999 - REQUIREMENT OF PRIMA FACIE CASE OF INVALIDITY FOR GRANT OF LEAVE TO INSTITUTE RECTIFICATION PROCEEDINGS - JURISDICTION OF CIVIL COURT AND INTELLECTUAL PROPERTY APPELLATE BOARD - APPLICABILITY OF SECTION 9, 11, 13 AND 18 OF THE TRADEMARKS ACT, 1999 - APPLICABILITY OF ORDER XXXIX RULES 1 AND 2 OF THE CIVIL PROCEDURE CODE, 1908 - CONDITIONS FOR GRANT OF INTERIM INJUNCTION.

Fact of the Case:

The Plaintiff, a pharmaceutical company, filed a suit for infringement of its registered trademark 'ZINCOVIT' and passing off against the Defendants, who were manufacturing and selling a product under the trademark 'ZINKOACT'. The Plaintiff claimed that the Defendants' trademark was deceptively similar to its own and was likely to cause confusion among consumers. The Defendants contended that the word 'ZINC' was common to the trade and could not be monopolized by the Plaintiff, and that the two trademarks were visually and phonetically dissimilar. The Defendants also filed an application seeking permission to institute rectification proceedings before the Intellectual Property Appellate Board (IPAB) against the Plaintiff's trademark registration.

Finding of the Court:

The Court held that the Plaintiff had made out a prima facie case of infringement and passing off. It noted that the two trademarks were phonetically and visually similar, and that the Defendants had adopted a similar packaging design. The Court also held that the word 'ZINC' was not common to the trade, as it was a chemical element that could not be registered as a trademark under Section 13 of the Trademarks Act, 1999. The Court further held that the Defendants were not entitled to institute rectification proceedings before the IPAB, as they had not obtained the Court's permission to do so under Section 111 of the Trademarks Act, 1958 (now Section 124 of the Trademarks Act, 1999). The Court also held that the balance of convenience lay in favor of the Plaintiff, as the Defendants had not shown that they would suffer irreparable loss if an injunction was granted. Accordingly, the Court granted an interim injunction restraining the Defendants from using the trademark 'ZINKOACT' or any other mark deceptively similar to the Plaintiff's trademark 'ZINCOVIT'.

Issues: 1. Whether the Defendants' trademark 'ZINKOACT' was deceptively similar to the Plaintiff's trademark 'ZINCOVIT'? 2. Whether the word 'ZINC' was common to the trade and could be monopolized by the Plaintiff? 3. Whether the Defendants were entitled to institute rectification proceedings before the IPAB without the Court's permission? 4. Whether the balance of convenience lay in favor of the Plaintiff or the Defendants?

Ratio Decidendi: 1. The Court held that the two trademarks were phonetically and visually similar, and that the Defendants had adopted a similar packaging design. It also held that the word 'ZINC' was not common to the trade, as it was a chemical element that could not be registered as a trademark under Section 13 of the Trademarks Act, 1999. 2. The Court held that the Defendants were not entitled to institute rectification proceedings before the IPAB, as they had not obtained the Court's permission to do so under Section 111 of the Trademarks Act, 1958 (now Section 124 of the Trademarks Act, 1999). 3. The Court held that the balance of convenience lay in favor of the Plaintiff, as the Defendants had not shown that they would suffer irreparable loss if an injunction was granted.

Final Decision: The Court granted an interim injunction restraining the Defendants from using the trademark 'ZINKOACT' or any other mark deceptively similar to the Plaintiff's trademark 'ZINCOVIT'. The Court also dismissed the Defendants' application for permission to institute rectification proceedings before the IPAB.