The main legal point established in the judgment is that while the plaintiff's registration of the trademark 'O2' in classes 5 and 28 did not warrant protection under Section 29(1) and 29(2) of the Trademarks Act, the plaintiff was entitled to injunction under common law for passing off against the defendant's use of the trademark 'O2 Spa'.

JUDGMENT :

V. PERIYA KARUPPIAH, J.

O.A. No. 446 of 2011:

1. Original Application praying that this Hon’ble Court be pleased to grant an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from in any manner using or otherwise dealing with the trade mark/trade name/domain name O2 or any other mark which is identical/similar to the applicant’s registered trademark amounting to infringement of the trade mark O2 registered under NO. 1574694 in classes 5, 28 and 42 or in any other manner whatsoever, pending disposal of the suit.

O.A. No. 447 of 2011:

Original Application praying that this Hon’ble Court be pleased to grant an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from using the mark O2 or any mark similar thereto in respect of their trade, business as part of their trade name/business name/corporate name/domain name, in websites, service mark, spas, health clubs or in any other manner to pass off and/or enabling others to pass off as and for applicant’s trade and business under the trademark O2 or in any other manner whatsoever, pending disposal of the suit.

These Original Applications coming on this day before this court for hearing the court made the following order:

O.A. No. 446 of 2011

This application has been filed seeking an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other persons claiming through or under them, from in any manner using or otherwise dealing with the trade mark/trade name/domain name ‘O2’ or any other mark which is identical/similar to the applicant’s registered trademark amounting to infringement of the trademark ‘O2’ registered under No. 1574694 in classes 5, 28 and 42 or in any other manner whatsoever pending disposal of the suit.

O.A. No. 447 of 2011

This application has been filed seeking an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other persons claiming through or under them, from using the mark ‘O2’ or any other mark similar thereto in respect of their trade, business as part of their trade name/business name/corporate name/domain name, in websites, service mark, spas, health clubs or in any other manner to pass off and/or enabling others to pass off as and for applicant’s trade and business under the trademark ‘O2’ or in any other manner whatsoever, pending disposal of the suit.

2. Heard Mr. A.A. Mohan and Mr. Arun C. Mohan, learned counsel for the applicant and Mr. Anand Sashidharan, learned counsel for the respondent.

3. The learned counsel for the applicant would submit in his argument that the plaintiff has filed the suit for the reliefs of injunction restraining the respondent from infringing and passing off by use of identical mark ‘O2’ as trade mark, to which the plaintiff has obtained registration from Trademark Registering Authorities. He would further submit that the applicant/plaintiff in the course of its business has adopted unique and distinct trademark ‘O2’ and was in vogue since the year 2001 and he had applied and obtained registration under No. 1574694 in classes-5, 28 and 42 in respect of health food in containers health food supplements, nutritional supplements, dietary supplements, meal replacement preparations, fitness equipments and apparatus and services relating to providing of food and drink, restaurant/hotel, coffee shop, snack bars, canteens etc., He would also submit that the said registration o