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BEFORE THE MADURAI BENCH OF MADRAS HIGH COURT
SENTHILKUMAR RAMAMOORTHY, J.
M/s. Proklean Technologies P. Ltd., Represented by Mr. Vishwadeep Kuila, Chennai - Appellant
Versus
M/s.Godrej Consumer Products Ltd - Respondent
Original Application. Nos. 71 & 72 of 2022 & C.S. (Comm. Div). No .22 of 2022
Decided On : 09-06-2022
Trademark Infringement - ProKlean - CPC, 1908 - [Order XIV Rule 8 of Original Side Rules r/w. Order XXXIX Rule 1 & 2 of CPC, 1908] - The court discussed the trademark registration certificates, prosecution history estoppel, distinctiveness of the mark, and balance of convenience in reaching its decision.
Fact of the Case:
The plaintiff sought interim injunctions to restrain the defendant from infringing the trademark 'ProKlean' and from passing off. The plaintiff claimed to have used the mark since 2012 and obtained registrations in different classes. The defendant contended that the marks were distinguishable and that its products were chemical-based, unlike the plaintiff's organic products.
Finding of the Court:
The court found that the plaintiff's registration in class 35 made the application for infringement maintainable. It also noted the prior use of the mark by the plaintiff's predecessors. The court rejected the defendant's reliance on prosecution history estoppel and found the mark 'ProKlean' to be distinctive. However, it denied the interim injunction based on the balance of convenience, requiring the defendant to maintain and submit accounts of turnover and profits.
Issues: The issues revolved around trademark infringement, passing off, distinctiveness of the mark, and the balance of convenience.
Ratio Decidendi: The court's decision was based on the plaintiff's registration in class 35, prior use of the mark, rejection of prosecution history estoppel, and the distinctiveness of the mark. The denial of the interim injunction was based on the balance of convenience.
Final Decision: The court disposed of the applications and required the defendant to maintain and submit accounts of turnover and profits. The suit was listed for a later date.
JUDGMENT
(Prayer: Original Application is filed under Order XIV Rule 8 of Original Side Rules r/w. Order XXXIX Rule 1 & 2 of CPC, 1908 seeking to grant an order of ad-interim injunction restraining the Respondent/Defendant, its men agents and servants from in any manner passing off its business as that of the Applicant's/Plaintiff's by using the name 'ProKlean' with or without a similar logo, or by any other identical name or deceptively similar or similar logo as that of the applicant/plaintiff, with or without any deceptively similar or similar logo as that of the Applicant/Plaintiff in its registered mark 'Proklean' or any of the other names and logos for which registration has been applied for by the applicant/plaintiff pending disposal of the suit.
Original Application is filed under Order XIV Rule 8 of Original Side Rules r/w. Order XXXIX Rule 1 & 2 of CPC, 1908 seeking to grant an order of ad-interim injunction restraining the Respondent/Defendant, its men, agents, servants, employees, licensees, distributors and anyone claiming through it, from or in any manner infringing the registered trade mark of the applicant/plaintiff 'ProKlean' with or without a similar logo, or by any other identical name or deceptively similar name as that of the Applicant/Plaintiff, with or without any deceptively similar or similar logo as that of the applicant/plaintiff in its registered mark 'proklean' or any of the other names and logos for which registration has been applied for by the applicant/plaintiff pending the disposal of the suit and thus render justice.)
1. In a suit for alleged trademark infringement, passing off, rendition of accounts, damages and surrender of infringing materials, the plaintiff has presented these two applications for interim injunctions to restrain the defendant from infringing the applicant's trademark and from passing off, respectively.
2. The applicant/plaintiff is a limited company incorporated under the name and style of ProKlean Technologies Private Limited. The applicant's predecessor adopted the mark 'ProKlean' for its unique probiotic products. The applicant stated that it has used the mark 'ProKlean' from the year 2012 on a continuous basis. The mark was registered as a word mark under Registration No.1981425 on 17.06.2010 in class 5 for goods described as 'deodorants other than personal use'. Concurrently, the word mark 'ProKlean' was registered under Registration No.1981426 on 17.06.2010 in class 3 for goods described as 'cleaning preparation' within the South Indian territory. One more registration was effected on 17.06.2020 for the word mark 'ProKlean' in class 35 for goods described as wholesale and retail services of cleaning preparation, etc. The applicant stated that it invested substantial sums of money and put in considerable effort in popularising the trademark which has acquired a strong reputation and goodwill in the Indian and international market.
3. Upon noticing the use of the mark 'ProClean' by the respondent in relation to floor cleaning products, before filing this suit, the applicant issued a cease and desist notice on 19.07.2021 calling upon the respondent not to use any trademark which infringes or results in passing off the applicant's trademark 'ProKlean'. The suit was filed because such cease and desist notice did not elicit an appropriate response.
4. With regard to the disclaimer by the applicant at the time of registration of the trademark, the applicant stated that such disclaimer was provided in the year 2010. Moreover, the disclaimer was in respect of two products bearing the mark ProClean which were used as surgical hand wash products. The applicant also pointed out that the Trademark Registry raised objections to the respondent's application for registration of the mark 'Godrej ProClean' on grounds specified under Section 11 of the Trademarks Act, 1999 (the Trade Marks Act) because similar trademarks were already on record for the same or similar goods. As regards the re
The court emphasized the importance of trademark registration, prior use, distinctiveness, and the balance of convenience in deciding on interim injunctions.
The court upheld the exclusive rights of a registered trademark owner against a similar mark that causes consumer confusion.
The word 'PRO' is laudatory and non-distinctive, and cannot be monopolized by a party unless it has acquired distinctive character or well-known status.
The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
Infringement of trade mark - Business in infringement of a registered design or a mark or is guilty of passing off, such a business cannot be said to be carried on in accordance with law and no right....
Point of Law : Section 27 of Trade Marks Act provides that no action for infringement will lie in respect of an unregistered trade mark.
Ex-parte ad-interim injunction vacated for suppression of material facts in trademark infringement suit; plaintiff must disclose fully prior ownership, adverse orders, relationships with clean hands;....
The main legal point established in the judgment is that the plaintiffs had suppressed and concealed material facts regarding their prior knowledge of the defendants' use of the mark 'KENT' in relati....
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
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