Bombay High Court
Rui Boutique vs Nidhi Arora on 9 October, 2019
Author: B. P. Colabawalla
Bench: B. P. Colabawalla
904.i.a.1.2019.doc
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
O. O. C. J.
IN ITS COMMERCIAL DIVISION
Dhanappa
I. Koshti
IA NO.1 OF 2019
Digitally signed
by Dhanappa I.
Koshti
WITH
Date: 2019.10.11
17:21:22 +0530 LEAVE PETITION (L) NO. 361 OF 2019
IN
COM IP SUIT (L) NO.1060 OF 2019
Rui Boutique ...Applicant/Plaintiff
Versus
Nidhi Arora ...Defendant
.....
Mr Hiren Kamod a/w Mr Vaibhav Keni and Ms Neha Iyer i/b M/s
Legasis Partners for the Applicant/Plaintiff
None for the Defendant
.....
CORAM : B. P. COLABAWALLA, J.
OCTOBER 09, 2019.
P.C. :
The applicant/plaintiff seeks to move without notice, for the reasons set out in paragraph 20 of the plaint and paragraph 4 of the application. This is an action for infringement of the applicant/ plaintiff's registered trade mark combined with a cause of action for passing off. Mr. Kamod, the learned advocate for the applicant/ plaintiff submitted that, since leave under Clause XIV of the Letters Patent to combine the cause of action for passing off with the cause of action for infringement of trade mark is not obtained, the applicant / plaintiff is presently not pressing for relief in passing off and that the applicant/plaintiff will press the relief for passing off after obtaining Pg 1 of 10
904.i.a.1.2019.doc such leave. He further submitted that the applicant/ plaintiff is not pressing for the relief in respect of appointment of Court Receiver, at this stage.
2 It is stated that the applicant/plaintiff is an old, established and reputed manufacturer and trader of ready-made garments dedicated to women's clothing such as salwar kameez, kurtis, suits, kurtas, kaftans, etc. According to the applicant/plaintiff, in or about 1986, two partners of the applicant/plaintiff viz. Mrs. Asha Sood and Mrs. Kanchan Ganatra, commenced the business of manufacturing and trading in respect of the said goods under the trade mark "RUI" with a view to distinguish the said goods from those of others. It is stated that over the years, the applicant/plaintiff has diversifed its range of goods and has also included a stylish range of kurtis, kurtas, kaftans, and a mix and match range for women. 3 It is stated that on or around 13th September 2005, the applicant/plaintiff secured registration of the trade mark label RUI bearing registration No.1384368 in class 25 in respect of ready-made garments. It is stated that though there is a disclaimer imposed by the Registrar of Trade Marks on the said registration stating that "registration of this trade mark shall give no right to the exclusive Pg 2 of 10
904.i.a.1.2019.doc use of design on the label", however, the said disclaimer does not apply to the expression RUI which is the only leading, essential and prominent feature of the said trade mark. Copies of the registration Certifcate and the online status report in respect of the applicant/ plaintiff's registered trade mark bearing No.1384368 in Class 25 are at Exh "A" to the plaint.
4 It is stated that the applicant/plaintiff has effected large and ready sales of the said goods bearing the applicant / plaintiff's RUI trade mark / trade name. It is stated that the applicant/plaintiff has also taken efforts to popularize the said goods bearing the said RUI trade mark / trade name and has spent considerable sums of money on advertisement and sales promotional activities. It is stated that from year 2007 to 2019 the applicant/plaintiff has accrued a sales turnover of about Rs.20,00,00,000/- and promotional expenditure of about Rs.45,00,000/-. A table containing the applicant /plaintiff's annual sales turnover and annual sales promotional expenses from the year 2007 to 2019 in respect of the said goods bearing the said RUI trade mark / trade name are at paragraph 6 of the plaint and a copy of the certifcate issued by the applicant / plaintiff's Chartered Accountant certifying the correctness of the said fgures is at Exh 'B' to the plaint.
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904.i.a.1.2019.doc 5 It is stated that the applicant/ plaintiff either by itself or through its franchisees, runs various stores in Mumbai, Chennai and Bangalore under the trading name and style containing RUI, from where, the said goods bearing the said trade mark are sold. It is stated that the applicant/plaintiff has great presence on the internet and has a domain name / website www.ruiboutique.com through which the applicant/plaintiff has been able to generate good business. It is stated that the applicant/plaintiff also has excellent presence on various social media websites including the popular websites "Facebook" and "Instagram". Printouts obtained from the WHOIS database in respect of the applicant/plaintiff's domain name, the homepage and some other pages of the applicant/plaintiff's website www.ruiboutique.com, and some random pages from the applicant/ plaintiff's Facebook and Instagram timelines are at Exh E, F and G to the plaint, respectively. It is stated that the applicant/plaintiff's said trade mark / name / domain name and the goods offered thereunder enjoy wide and enviable reputation and goodwill among the general public.
6 According to the applicant/plaintiff, in or about the third week of September 2019, one of the applicant/plaintiff's partners was Pg 4 of 10
904.i.a.1.2019.doc surprised to receive a call congratulating her on opening a new store under the impugned mark / name "RUI INDIA" in Noida. It is stated that the applicant/plaintiff immediately conducted a search on the internet and came across the links https://www.Facebook. com/ruiindia.in and https://www.instagram.com/rui.india depicting the impugned trade mark / trade name / RUI INDIA, which revealed that the defendant is advertising and/or marketing and/or offering for sale apparel and/or clothing and/or ready made garments for women under the impugned trade mark / trade name. Printouts of some random pages from the defendant's Facebook / Instagram timelines are at Exh H to the plaint.
7 It is stated that the defendant has also applied for registration of the impugned word mark "RUI INDIA" bearing application no.3833708 in class 25 in respect of clothing, footwear, headgear on a proposed to be used basis. It is stated that in the Preliminary Examination Report to the impugned trade mark application, the Registrar of Trade Marks has cited the applicant / plaintiff's registered RUI trade mark bearing no.1384368 in class 25 as a conficting trade mark. It is stated that in its reply to the said Preliminary Examination Report, the defendant has alleged that the Pg 5 of 10
904.i.a.1.2019.doc impugned mark is entirely different from the said registered trade mark of the applicant/plaintiff. Copy of the defendant's trade mark application bearing no.1384368 in class 25, printout of the status of the defendant's said trade mark application, copy of the said Preliminary Examination Report and a copy of the reply fled by the defendant are at Exhs I, I-1, I-2 and I-3 to the plaint, respectively. 8 Mr. Kamod the learned advocate submitted that the defendant's impugned trade mark / name / RUI INDIA is identical with and/or deceptively similar to the applicant/plaintiff's registered trade mark label RUI bearing registration No.1384368 in class 25. He submitted that the addition of the non-distinctive and descriptive expression such as "INDIA" does not make the rival trade marks / names dissimilar. He submitted that the defendant was put to notice about the applicant/plaintiff's prior registered trade mark label RUI bearing no.1384368 in class 25 when the same was cited in the Preliminary Examination Report issued by the Registrar of Trade Marks. He submitted that the possibility of confusion and deception is further enhanced by the fact that both the parties have online presence and in both the rival trade marks / trade names, RUI is the only leading, essential and prominent feature.
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904.i.a.1.2019.doc 9 He submitted that, in aforesaid circumstances, it is absolutely just and necessary that an ex-parte ad-interim order be passed restraining the defendant from infringing the applicant / plaintiff's registered trade mark and passing off the impugned goods / business as that of the applicant/plaintiff. He submitted that considering the dishonest conduct of the defendant, the applicant /plaintiff apprehends that if the defendant is given notice of the present application, there is a strong likelihood that the defendant would remove the existing stock of all the impugned goods bearing or containing the impugned mark / name / label from its possession, custody and / or control and sell or part with possession thereof or dump the impugned goods in the market and the purpose of making the present application will be defeated. He submitted that, it is in the interest of the general public along with that of the applicant / plaintiff that the ad-interim reliefs prayed for herein in respect of infringement of its trade mark be granted without notice to the defendant.
10 I have heard the submissions in detail and perused the record and proceedings of this suit/application. The material produced before me, prima facie, shows that the applicant/plaintiff Pg 7 of 10
904.i.a.1.2019.doc has secured statutory rights in the trade mark RUI and the said trade mark / trade name RUI of the applicant/plaintiff has acquired immense goodwill and reputation. Prima facie, there is no doubt that the defendant's impugned trade mark RUI INDIA is identical with / closely and deceptively similar to the applicant/plaintiff's trade mark / name RUI. Prima facie, I am of the opinion that the use of the impugned trade mark / name RUI INDIA, the impugned email address [email protected] and/or the facebook page https://www. facebook.com/ruiindia.in and/or the Instagram page https://www. instagram.com/rui.india cannot be said to be honest. Considering the identity / close and deceptively similarity in the rival trade marks / names and nature of goods / business, the possibility of confusion and deception among the general public cannot be ruled out, particularly in view of the fact that both the parties have online presence and in both the rival trade marks / names RUI is the only leading, essential and prominent feature. Unless reliefs as prayed for are granted, the applicant / plaintiff is likely to suffer injury. The applicant/plaintiff has made out a strong prima facie case. The balance of convenience is also in favour of the applicant/plaintiff. The applicant/plaintiff is also likely to suffer irreparable injury if the defendant's acts of infringement continue.
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904.i.a.1.2019.doc 11 In view of what is stated in paragraph 20 of the plaint and in view of the above, I am satisfed that the object of granting ad- interim reliefs would be defeated if notice of this application is given to the defendant. Therefore, there shall be an ad-interim order in terms of prayer clause (a) of the application, which reads as thus:
a) that pending the hearing and final disposal of the suit, Defendant by itself, its proprietors, directors, partners, servants, agents, dealers, distributors and all persons acting on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiff's registered trade mark bearing registration No.1384368 in class 25 by the use of the impugned trade mark/name RUI INDIA and/or any other trade mark/ name containing the word RUI and/or any other trade mark/name identical with or deceptively similar to the Plaintiff's registered trade mark bearing registration No.1384368 in class 25 in respect of readymade garments and/or same or similar goods or in any other manner whatsoever."
12 This order will operate till 14th November 2019. 13 The advocates for the applicant/plaintiff are directed to serve a copy of this order on the defendant within 7 days of this order being uploaded on the High Court server. All parties are to act on the basis of an ordinary copy of this order duly authenticated by the Associate of this Court. Liberty to the defendant to apply for variation of this order with 24 hours prior notice to the advocates for the Pg 9 of 10
904.i.a.1.2019.doc applicant / plaintiff.
14 List this Interim Application, alongwith the Clause XIV Leave Petition, for further ad-interim reliefs on 14th November 2019.
(B. P. COLABAWALLA, J.) Pg 10 of 10