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2016 Supreme(Online)(KER) 33825
HIGH COURT OF KERALA
A.HARIPRASAD, J
BIJU – Appellant
Versus
INNERSHOPPE REPRESENTED BY THE MANAGING PARTNER K V SOMASUNDARAM – Respondent
FIRST APPEAL FROM ORDERS 189/2016
Adding a prefix to a registered trademark does not eliminate the risk of infringement if it causes public confusion or misleads consumers regarding the source of goods.
Headnote:
Trademark - Trade Marks Act - Sections 29, 134 - The court interpreted Section 29 of the Trade Marks Act concerning trademark infringement, concluding that prefixing 'Nayans' does not negate infringement of 'Inner Shoppe'. The ruling emphasized the need for distinctiveness and the potential for public confusion.
Fact of the Case:
The respondent, a partnership owning the registered trademark 'Inner Shoppe', filed for a temporary injunction against the appellant for using a similar name 'Nayans Inner Shoppe', claiming it infringed their trademark rights. An injunction was initially granted but later the appellant was found to have violated it.
Issues: The primary issue was whether adding 'Nayans' to 'Inner Shoppe' constituted trademark infringement or if it alleviated the risk of confusion among the public as to the source of goods.
Ratio Decidendi: The court reiterated that trademark infringement occurs if a mark is identical or deceptively similar to a registered trademark, establishing that mere prefixation does not prevent confusion and hence doesn't absolve the appellant of infringement.
Final Decision: The appeal is allowed, setting aside the prior order for punitive action and directing the lower court to expedite the related suit.
JUDGMENT
The respondent in this appeal is the plaintiff in O.S.No.12 of 2014 filed before the District Court, Thrissur. The suit is filed under Section 29 read with Section 134 of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act'). Alongwith the suit, an application for temporary injunction was also filed. The defendant therein is the appellant.
2. Common averments in the suit and the application are as follows:
Respondent is a partnership with a firm name 'Inner Shoppe', which has been carrying on showroom sales of various garments, such as inner wears, clothing items for new born babies, night wears etc. The firm has four showrooms in Thrissur town.
3. 'Inner Shoppe' is a trademark registered by the respondent firm and the respondent obtained a certificate from the Registrar of Trade Marks in this regard. The name of the firm and the trademark is the same. The trademark is valid and subsisting in all respects. Respondent firm has invested huge amounts in the garment business and substantial amounts are being spent on advertisements each year. By frequent advertisements in various print and electronic media, the volume of business of the respondent firm has increased. Besides, the respondent firm is maintaining its own website. The respondent firm, as a result of the continuous advertisements and marketing technics, have earned a goodwill. Customers are satisfied not only with the quality of the products, but also with the fairness and transparency in the business dealings. According to the respondent, it has earned a good reputation in the area of its operation. Respondent firm has all the required licences for doing the business. While so, the respondent noticed the appellant hastily trying to establish a showroom and sales counter about 100 meters away from the respondent's establishment assigning the very same title 'Inner Shoppe'. The appellant took hectic steps to furnish a showroom and start a business very close to the respondent's premises. The appellant made all arrangements for starting a business with a trade name infringing the right of the respondent. The appellant has no right to use the trade name 'Inner Shoppe' as that is the registered property of the respondent firm. Hence the suit for permanent prohibitory injunction is filed for restraining the appellant, his agents, servants, etc. from using the trademark 'Inner Shoppe' in violation of the provisions of law.
4. I.A.No.4927/2014 is the application for temporary injunction filed alongwith the suit. An interim order was passed by the District Court on 30.12.2014 restraining the appellant from using the name 'Inner Shoppe' which is the trade mark of the respondent.
5. Subsequently, I.A.No.69/2015 is filed by the respondent alleging that the appellant violated the injunction order duly served on him by starting and continuing the business with a name 'Nayans Inner Shoppe'. The respondent alleged that this is in flagrant violation of the prohibitory order passed against and communicated to the appellant. Respondent contended that the appellant has contumaciously violated the order fully knowing its scope and legal effect.
7. The appellant filed a counter in this application.
According to him, he intended to carry on a business under the name and style 'Nayans Inner Shoppe'. The intended business is to deal with inner garments of ladies and gents and other ready-made items. The term 'Inner Shoppe' means a shop dealing with inner-wears. This is used only to identify the goods that could be purchased from the business concern. The appellant never infringed any of the rights of the respondent. The appellant has obtained permission from Thrissur Corporation for the use of the name 'Nayans' and also the same name was registered with the Department of Commercial Taxes, Government of Kerala. The respondent has no right to restrain the appellant from doing garment business with the name 'Nayans Inner Shoppe'. Therefore, he requested to dismiss the application u
