Calcutta High Court
Duroply Industries Limited & Anr vs Ncl Industries Limited on 25 February, 2021
Author: Debangsu Basak
Bench: Debangsu Basak
OC 10
ORDER SHEET
IA GA 1 of 2021
CS 41 of 2021
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL DIVISION
DUROPLY INDUSTRIES LIMITED & ANR.
VS
NCL INDUSTRIES LIMITED
BEFORE:
The Hon'ble JUSTICE DEBANGSU BASAK
Date: 25th February, 2021.
(Via Video Conference) Mr. Debnath Ghosh, Mr. Sarosij Dasgupta, Ms. Pubali Sinha Chowdhury, Ms. Mini Agarwal, Advs.
...for the plaintiff Mr. Rudraman Bhattacharyya, Ms. Amrita Panja,Advs.
...for the defendant The Court: In a suit for infringement and passing off the registered word marks 'DURODOOR' and 'DURODOOR LITES', the plaintiffs seek interim protection.
Learned advocate appearing for the plaintiffs submits that, the registration of the word mark 'DURODOOR' and 'DURODOOR LITES' stands in the name of the plaintiff no.
2. The plaintiff no. 2 permitted the plaintiff no. 1 to utilise such word marks. He draws the attention of Court to an invoice of the plaintiff no. 1 dated December 17, 2003. He submits that, the plaintiffs were using the word mark since at least 2003. The registrations were obtained claiming user from 1973. Even if the Court discounts the claim of user from 1973 as made in the registration of the word marks then also the Court should take into account the user of the word marks by the plaintiff from 2003. He submits that, the plaintiffs are selling the products which are FLUSH DOORS on all India basis. He draws the attention of the Court to the fact that the defendant initially applied for registration of the word mark 'DURADOOR' which was rejected at least twice. 2 He submits that, despite two refusals the defendant made an application for registration of the word mark 'DURADOOR' claiming user from April 24, 2019. He submits that, such application is at the show cause stage. He refers to the cease and desist notice issued by the plaintiff dated October 29, 2019. He submits that the defendant did not respond thereto. Plaintiff issued the second cease and desist notice dated November 6, 2019. In response thereto, the defendant by a letter dated November 11, 2019 claimed that the word DURA is generic and that, DURADOOR is an honest concurrent the user DURO. He submits that, the contention that the word DURO is generic is not available to the defendant in view of the application for registration of the word DURA made by the defendant. He submits that, it cannot be said that the conduct of the defendant is honest and that the defendant used the word DURADOOR as an honest concurrent user. He submits that the defendant is trying to sell its products bearing the word mark DURADOOR in Kolkata. He seeks an order of injunction in terms of prayers (a) and (b).
Learned Advocate for the plaintiff refers to Sections 29 and 32 of the Trade Marks Act, 1999 in support of his contention. He relies upon an order dated January 4, 2021 passed by the Court in IA GA 1 of 2020, IA GA 2 of 2020 in CS 92 of 2020 (Ganesh Grains Limited and Anr. Vs. M/s. Shree Ganesh Besan Mill and Ors.), the judgment and order dated January 15, 2020 passed in GA 2305 of 2018 in CS 177 of 2018 (ARG Outlier Media Asianet News Private Limited vs. Shailputri Media Private Limited) and the order dated March 4, 2020 passed in APO No. 40 of 2020 (Shailputri Media Private Limited vs. ARG Outlier Media Asianet News Private Limited) and the order of the Supreme Court dated April 20, 2018 which reinstated an order of injunction passed by the Trial Court.
Learned advocate appearing for the defendant submits that, the defendant waited for a long period of time from November 6, 2019 when the first cease and desist notice was issued to file the instant suit. He submits that, the defendant should be afforded an opportunity to file an affidavit controverting the allegations made in the petition before 3 granting an ad-interim order of injunction. He submits that the plaintiff at best can claim registration in respect of word marks 'DURADOOR' and 'DURADOOR LITES' in respect of the FLUSH DOORS. The defendant is manufacturing and selling cement bonded particles board which according to him is a different product. Therefore, an ad- interim order of injunction should not be issued. He submits that, the application of the plaintiff for the registration of the DURO was rejected. He draws the attention of the Court to Section 29 of the Act of 1999 in support of the contention that the ad-interim order of injunction should not be passed.
As noted above, the plaintiffs are claiming protection on the ground of infringement and passing of their registered word mark 'DURODOOR' and 'DURODOOR LITES'. Prima facie, there exists registration of such word marks in favour of the plaintiff no. 2 with the plaintiff no. 2 permitting the plaintiff no. 1 to use the same. According to the learned advocate for the plaintiffs the registrations of the word marks are in respect of a FLUSH DOORS ALL BEING GOODS INCLUDED IN CLASS 19.
The defendant is manufacturing cement bonded particles board as claimed on behalf of the defendant. The defendant is however using the word mark DURADOOR. Apart from the registration that exist in favour of the plaintiff with regard to the word mark DURADOOR, the word DURADOOR is phonetically and deceptively similar to the word DURODOOR of the plaintiffs. There exists registration of the word mark DURODOOR in favour of the plaintiffs.
Ad-interim order of injunction was granted in the cases cited on behalf of the plaintiffs.
In an action for infringement and passing off delay per se is not a ground for refusal of an ad-interim order of injunction.
Prima facie, I am of the view that, since the product of the defendant is similar to that of the plaintiffs and since the word mark used by the defendant is phonetically and 4 deceptively similar to that of the registered word marks, it would be appropriate to grant an order of ad-interim injunction in terms of prayer (a) and (b) of the petition.
Let affidavit-in-opposition be filed within three weeks from date; reply thereto, if any, within two weeks thereafter. List the application under the heading "Adjourned Motion" six weeks hence.
(DEBANGSU BASAK, J.) TR/ 5