|CITATION||2007 (34) PTC 392 (Del)|
|COURT||Delhi High Court|
|DATE OF JUDGEMENT||16.01.2007|
Since the signing of the Trade-Related Aspects of Intellectual Property Rights (TRIPS), continuous efforts have been made to set standards for intellectual property protection in India. Passing of various legislations and setting up of institutions to govern their implementation properly has given an impetus to IPR regime in the country. Along with legislations and institutions, the Courts at all levels have also done a commendable work in enforcement of laws. In the present case, the Court considers aspects of prior-use, balance of convenience and deceptive similarity in depth.
The facts of the case are: Plaintiff and defendant were both engaged in manufacturing and selling of chewing tobacco under the names M/s Shiva Tobacco Company and M/s Ansul Industries, respectively. The plaintiff marketed its product by the name of ‘PanchhiChaap’, since 1973 whereas the defendant marketed under ‘UdtaPanchhi’, since 1982. ‘PanchhiChaap’ was registered in 1974 under the Trade and Merchandise Marks Act of 1958.
In appeal by the defendant against the Trial Court’s order granting temporary injunction to the plaintiff, learned single judge of High Court, Justice Sanjiv Khanna stressed upon prior use and confusion caused by the later trade mark to affirm the Trial Court’s decision.
The main issues in the case are:
- Whether or not the defendant has infringed the plaintiff’s trademark, ‘Panchhi’, under Section 29 of the Trade Marks Act, 1999. Whether the marks, ‘PanchhiChaap’ and ‘UdtaPanchhi’, are deceptively similar.
- Whether or not the injunction should be denied on the ground of delay and laches.
- Whether or not there exists a balance of convenience in favour of the plaintiff.
Summary of court decision and judgement
A suit was instituted by the plaintiff in 1997 in the Trial Court to obtain permanent as well as temporary injunction to restrain the defendant from using the mark “Panchhi”. The temporary injunction was granted to the plaintiff in 2005, on the ground of prior and registered usage of the mark. Though the defendant contended that the injunction could not be granted due to delay in filing suit, the Court refused to accept the contention and passed its order.
On appeal by the defendant to the High Court, the Court dismissed the appeal and after due consideration of all the facts and circumstance of case, affirmed the lower court’s order.
The first point to be looked at is the similarity of the marks, ‘PanchhiChaap’ and ‘UdtaPanchhi’. In both the trademarks ‘Panchhi’ is the common word. The plaintiff was prior user of the word ‘Panchhi’ in relation to their trademark ‘PanchhiChaap’ and the same had acquired a distinctive meaning. Thus, when the same word was used in both the marks, from the eyes and ears of an average customer, there was a likelihood of deception when both visual and phonetic tests are applied.The test also to be applied in such cases is the doctrine of fading out, i.e., the marks are to be seen from the viewpoint of a man of average intelligence having imperfect recollection. And furthermore, the trademarks were used on a product which was purchased by such a class of people who would not compare all brands before they bought the product. To add to the similarity, both products had on their packaging a logo of a flying bird which further led to confusion and deception. Thus, the two trademarks were deceptively similar. This implies that the defendant had infringed the appellant’s trademark under Section 29 of the Trade Marks Act, 1999.
As to the question regarding delay and laches, the plaintiff company was initially a partnership concern which got ownership of its trademark ‘PanchhiChaap’ in 1974. On the other hand, defendants adopted the mark “UdtaPanchhi” in 1982 and registered it in 1990. The suit however was instituted in 1997 and the reason for delay was that the plaintiff was not aware of the defendant’s infringement activities. There exists a difference between negligence and acquiescence.In various precedents also, time and again judges have pointed out that delay in bringing action in infringement cases is not a good ground for refusal of injunction. Thus, injunction could not be denied on grounds of delays and laches in the present case also.
From the point relating to adoption and registration of their respective trademarks, it is evident that the plaintiff is a prior user and registered owner of the mark ‘Panchhi’ which is a part of the trademark ‘PanchhiChaap’. When the defendant started their business they must have been well aware of the plaintiff and their trademark, and even then the former chose to use a name similar to the latter’s name. Thus, adoption can be said to be dishonest and fraudulent. This makes the balance of convenience in favour of the plaintiff. Overall, it can be said that the Court considered all points to the case and gave a correct judgement.
In a lot of cases it is observed that the judges do not consider all aspects of the case or all evidences or arguments. This may lead to a prejudiced judgement. The present judgement sets an excellent example of a wholesome consideration of all points falling in dispute and then giving a judgement which is correct in law as well as ethics. From the view point of IPR, the judgement has well emphasised upon the prior user concept to bring out the offence of infringement. The present judgement has also been relied upon in the case of The Timken Co. v. Timken Services Pvt. Ltd. on the point that mere delay in bringing action cannot defeat grant of injunction.
The Timken Co. v. Timken Services Pvt. Ltd., 55 PTC 568, (Del: 2013).