JUDGEMENT

ANISH DAYAL, J. I.A. 827/2023 (under Order XXXIX Rule 1 & 2 CPC) 1. This application has been filed as part of the suit preferred by plaintiff seeking a decree of permanent injunction restraining defendant, and all those under it, from directly or indirectly dealing in products and services under the trademark ‘RALLEYZ’ (‘impugned mark’) or any other trademarks/logo/device/domain name which may be identical or deceptively similar to plaintiff’s trademark ‘RALEIGH’ (‘plaintiff’s mark’), and other attendant reliefs.

2. On 19th January, 2023, this Court issued summons in the suit, and notice in the instant application. Parties have completed their pleadings and submissions of both parties in the instant application have been heard.

3. Plaintiff’s grievance pertains to defendant’s use of the impugned mark, which is claimed to be deceptively similar, including phonetically, to plaintiff’s mark, and is being used for identical goods i.e. bicycles. The comparative tabulation of plaintiff’s mark and the impugned mark as applied to their respective bicycles is extracted below:

4. At the outset, Mr. Chander M. Lall, Senior Counsel for plaintiff, states that defendant has registered, or applied for registration, of the impugned mark in classes other than Class 12 (vehicles, apparatus for locomotion by land, air or water). He states that plaintiff has no objection to the use of the impugned mark in classes other than Class 12, considering that plaintiff’s mark is essentially for bicycles, and parts thereof, which are allocated and classified under Class 12. Therefore, the controversy is focused around use of the impugned mark in Class 12 for various kinds of bicycles.

Submissions on behalf of Plaintiff 5. Senior Counsel for plaintiff has made the following submissions in support of this application:

Digitally Signed (i) Plaintiff is a company organized and existing under the laws of Switzerland and is represented herein through its licensee and power of attorney holder, Mr. Rajesh Kalra. Plaintiff is operating the business of cycles internationally, and claims to be the pioneer of cycling in Europe and owns a wide range of bicycle brands including ‘RALEIGH’. Plaintiff claims that its bicycles under the mark ‘RALEIGH’ are available in 50 countries, including India. The Raleigh bicycles are supplied to a large user base, from children’s bikes to city bikes and plaintiff has acquired great reputation for their product. In 1887, Sir Frank Bowden found ‘Raleigh’. Originally the marks were filed in the name of ‘The Raleigh Cycle Company Limited’, which later, due to corporate restructuring, came to be owned by plaintiff.

(ii) In India, the mark was in commercial use since 1939. The website owned and operated by plaintiff is www.raleigh.co.uk, which is accessible to all interested persons across the globe, and was registered in the year 1998. Plaintiff claims that its mark ‘RALEIGH’ is inherently distinctive in nature, having no specific dictionary meaning, and plaintiff has acquired substantial goodwill in trade and in the eyes of the public due to extensive and continuous use for the past several decades.

(iii) Plaintiff’s counsel further submits that the trademarks have been popular in India in relation to bicycles, and its use by the Sen-Raleigh Cycle Factory, Asansol, West Bengal, can be traced back to the pre- independence era (late 1920’s - early 1930’s). A news item dated 03rd February, 2021 has been appended, which narrates the history of plaintiff’s mark and the bicycles.

(iv) It is stated that plaintiff has entered into an exclusive distributorship and license agreement with M/s Naren International (the Indian Licensee) located at Ludhiana, Punjab, permitting them to exclusively manufacture, import, sell, and distribute Raleigh bicycles in India, since 2012. A copy of the latest license agreement dated 20th June 2020, valid till 19th June 2025, has been appended. Thus, p