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HIGH COURT OF BOMBAY
S. J. KATHAWALLA, J
M/s. Rails Engineering Works – Appellant
Versus
Mr. Abdul Sattar – Respondent
Suit No. 806 of 2003
For the Appellants/Petitioners: Mr. Amit Jamsandekar
For the Respondents: None
The registered proprietor of a trademark has exclusive rights, and unproven claims of prior use by another party do not constitute a defense against infringement.
Headnote:In relation to the infringement of trademarks, the Court analyzed the provisions of the Trade Marks Act, 1999 and established that the Plaintiffs, as registered proprietors of the mark PILOT, have exclusive rights to its usage. The Defendants, despite claims of prior usage, failed to provide adequate evidence. The key issues revolved around the rights of trademark protection, namely whether the Defendants infringed upon the registered mark and engaged in passing off, which were determined affirmatively in favor of the Plaintiffs. The Court ultimately decreed the Plaintiffs' suit, awarding damages. The final verdict was that the suit was decreed in terms of prayer Clauses (a), (b) & (d) of the Plaint.
| Table of Content |
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| 1. the nature of the business of both the plaintiffs and defendants regarding trademark use. (Para 1 , 2 , 3) |
| 2. the defense raised by the defendants and the framing of issues. (Para 4 , 5) |
| 3. the court's findings on jurisdiction and prior user claims. (Para 6 , 9 , 10 , 11 , 12) |
| 4. the court's ratio on trademark registration and infringement. (Para 8) |
| 5. the final order and implications of awarded damages. (Para 13) |
ORAL JUDGMENT:
1. The Plaintiffs are a Partnership Firm registered under the Indian Partnership Act, 1932 and are engaged in the business inter alia of manufacturing, marketing and selling gas welding equipment (i.e. gas cutting nozzles) and parts thereof.
2. Defendant No.1 is the sole proprietor of Defendant No.2 which is engaged in the business inter alia of manufacturing, marketing and selling of gas cutting nozzles.
3. The Plaintiffs have filed the present Suit against the Defendants, inter alia, for a perpetual order and injunction restraining the Defendants from in any manner whatsoever, infringing the Plaintiffs' registered trademark PILOT and also from passing off the goods of the Defendants as and for the goods of the Plaintiffs and/or enabling others to do so by using the identical, impugned mark PILOT or any other deceptively similar mark.
4. The Defendants have filed their Written Statement dated 1st October, 2007. The defence raised by the Defendants therein is that there is no cause of action, that the Defendants are the prior user of the mark PILOT, their use being claimed since 1968, that the Defendants have registration of the copyright in respect of the device of the mark PILOT as on 19th May, 1983, and that they have applied for the registration of the trademark PILOT. In the Written Statement it is stated that the Defendants have voluminous documentary evidence to show that the Defendants have been using the mark ‘Pilot’ since 1968. The Defendants have denied that the Plaintiffs are the registered proprietor of the mark ‘Pilot’ and that the Plaintiffs have acquired goodwill and reputation in the same. The allegations of the Plaintiffs of infringement and passing off are denied by the Defendants.
5. In February, 2013, the Suit was listed under the caption “For framing issues”. However, none appeared for the Defendants. By an order dated 26th February, 2013, this Court framed the following issues:
(a) Whether the Plaintiffs prove that the Defendants, by using the mark 'Pilot' in respect of their goods, are infringing the Plaintiffs' registered trade mark?
(b) Whether the Plaintiffs prove that the Defendants, by using the mark 'Pilot' in respect of their goods, are passing off their goods and/or enabling others to pass off the same?
(c) Whether the Defendants prove that the present Suit is filed without any cause of action?
(d) Whether the Defendants prove that the Defendants are the prior and continuous user of the mark 'Pilot' in respect of the goods manufactured and sold by them?
(e) What order? What relief?
6. The Plaintiffs have filed the affidavit of evidence, affidavit of documents and the compilation of original documents. The Defendants have failed to file their affidavit of documents and compilation of original documents. The Defendants sought time on many occasions to comply with the directions of this Court, however they have failed to comply with the same despite repeated opportunities being given to them. The Advocates, Mr. Sunil N. Nair and Mr. T. R. Patel have taken discharge in the matter. In fact, on the earlier occasion when the Defendants failed to comply with the directions passed by this Court, the Defendants filed a Notice of Motion (L) No. 1506 of 2013 to recall the order dated 15th April, 2013 and allow the Defendants to file their affidavit of documents and compilation of the original documents. On 9th January, 2014 when the Notice of Motion came up for hearing, the Defendants sought one week’s time to file the affidavit of documents and compilation of the original docume
