Delhi District Court
Shri Vikas Gulati vs M/S Focus Optic on 17 September, 2007
1
IN THE COURT OF SMT. ASHA MENON, ADJ,
TIS HAZARI COURTS, DELHI.
Suit NO.151/05
Shri Vikas Gulati .........Plaintiff.
Vs.
M/s Focus Optic. .........Defendant.
ORDER
1. This order will dispose of the application of the plaintiff moved under O.39 r 1& 2 CPC and the application moved by the defendant under S.124 of the Trade Marks Act 1999.
2. The brief facts as are essential for the disposal of the two applications are that the plaintiff has filed this suit for perpetual injunction against the defendants restraining them from infringing the Trade Mark of the plaintiff and also for passing off and rendition of accounts. It is alleged that the plaintiff and the defendants were dealing in optics and allied business. It is stated that the plaintiff had a registered trade mark in the word "FOCUS" for the manufacture and sale of optical goods and that the word was also its corporate name. It has been stated that the plaintiff had been in the business since 1986.
23. It has been alleged that the defendant, being in the same business since 2005 had adopted the trade mark of the plaintiff to mislead the public as to the source of their goods as being the plaintiff and passing their goods as if they were a sister concern of the plaintiff. It is stated that the defendant had infringed the trade mark of the plaintiff by adding the word "FOCUS" in their name. Hence it has been prayed that the defendant be restrained from infringing the registered trade mark of the plaintiff and be asked to account for the use of the registered trade mark belonging to the plaintiff. By the application under O.39 r 1 & 2 CPC the plaintiff has sought an interim injunction against the defendant pending the disposal of the suit.
4. The defendant has taken the plea that the word "FOCUS" was a commonly used word and the plaintiff could claim no proprietary rights to it. It is contended that the word is descriptive and generic and could indicate the quality and intended purpose of the goods involved in the business viz.optical goods, ophthalmic lenses, optical frames , artificial eyes, optical instruments and machines. It has been denied that the defendants trade mark FOCUS OPTIC was either identical with or deceptively similar to the trade mark of the plaintiff which was FOCUS VISION CARE.
35. It has been claimed in the written statement that the trade mark/ name of the defendant as a whole neither resembled that of the plaintiff nor was it deceptively similar. The defendant has claimed to be in business since 2003 and has submitted that the defendant had built up immense goodwill and the plaintiff had been aware of the business of the defendant all through. Hence it is alleged that the case of the plaintiff was liable to be dismissed on principles of delay and laches as well as estoppel and waiver.
6. The defendant has contended that the registration of the trade mark of the plaintiff was wrong and was liable to be rectified. The defendant reserved its rights to do so. The defendant further submitted that it had sought the registration of its trade mark which was likely to be allowed, and that long user was in its favour. It was submitted that the plaintiff was or atleast ought to have been aware of the defendant and its business since 2003. Thus the defendant has prayed for the dismissal of the suit and therefore of the application for interim injunction submitting that the plaintiff was not entitled for it.
7. In the application under S.124 Trade Marks Act 1999 it has been submitted that the plaintiff had illegally and fraudulently obtained the registration of the trade mark in question when the plaintiff was not entitled to it .It has been alleged that the 4 word was generic and indicated the quality of the product and that in any case the plaintiff was not the manufacturer and had obtained the registration by practicing fraud. It has been submitted that the registration was liable to be rectified and for this purpose the defendant had filed an application for rectification before the Intellectual Property Appellate Board (IPAB for short). It has been submitted in the application that since it was the IPAB 's jurisdiction to determine the validity of the registration of the plaintiff's trade mark, the present suit of the plaintiff based on the registered trade mark was liable to be stayed till the disposal of the petition by the IPAB.
8. I have heard the arguments of Sh. Ghiraiya ld. Counsel for the plaintiff and Sh.K.S.Bansal ld.counsel for the defendant. Before disposing of the application under O 39 r 1 & 2 CPC I would like to deal with the application under S.124 Trade Marks Act 1999.
9. Section 124 of the Trade Marks Act 1999 provide for the stay of the proceedings where the validity of the registration of a trade mark was in question. The Ld counsel for the defendant has submitted that since the application for rectification is pending before the IPAB, the present proceedings should be stayed. On the other hand the Ld. Counsel for the plaintiff has argued that the suit was not required to be stayed since the 5 application filed by the defendant before the IPAB had not been prior in time to the suit. He has further submitted that the application had not been filed on the granting of time by the Court after the Court had been satisfied with the plea of the defendant regarding the validity of the registration. The Ld. Counsel also submitted that even if the suit was to be stayed, the court had ample powers under S.124 (5) Trade Marks Act 1999 to issue interlocutory orders to restrain the defendants from infringing the trade mark of the plaintiff till the disposal of the rectification petition.
10. I am of the considered view that in the present case there is no occasion to stay the suit. The language of S.124 is clear and unambiguous. It is no doubt the Court trying the suit alleging infringement that has to be petitioned for the stay of the suit. The application is no doubt maintainable. But there are certain conditions adjuncts to the applicability of S.124 for the stay of the suit. The application for rectification should be pending at the time of the institution of the suit. Else, on the defence raised by the defendant the Court should be satisfied that the plea of the defendant regarding the invalidity of the registration is prima facie tenable, the suit is to be adjourned for three months from the framing of the issue to enable the party to approach the IPAB for rectification.
611. In the present case the Court has not formed any such prima facie opinion nor has it permitted time to the defendant to approach the IAPB for rectification. So the proceedings could be stayed only if the application for rectification was filed prior to the filing of the suit. However, it is to be noted that the present suit was filed on 31.8.05. The defendant put in appearance for the first time and also filed its written statement on 6.10.05. In the written statement the defendant had claimed the right to approach the IPAB for rectification. But it did not chose to seek the opinion of the Court and the framing of the issue regarding the validity of the registration and time to approach the IPAB.
12. Instead the defendant filed an application seeking rectification before the IPAB on 18.10.05 of which the notice was issued by the IPAB to the present plaintiff for 17.11.05 . Thus the application for rectification was filed after the filing of the suit. The condition provided under S 124 (1) (i) is not satisfied in the present case. Therefore there is no occasion to stay the suit. I am supported in my view by the decision of the H'ble High Court in the case reported as Pfizer Products Inc. versus Rajesh Chopra & Ors. 2007 (35) PTC 59 (Del).
13. The application under S.124 Trade Marks Act 1999 is dismissed.
714. Coming to the application under O.39 r 1 & 2 CPC , the usual parameters will have to be considered to decide whether or not the plaintiff would be entitled to the injunction as prayed for.
15. Admittedly the plaintiff is the registered proprietor of the trade mark FOCUS Vision Care vide registration number 479297 in Class9 of the Fourth Schedule to the Trade Marks Rules. The trade mark registered was FOCUS Vision Care. The date of registration is 1.10.1987. The defendant , as per its own case, had started business only in the year 2002. It was the argument of the Ld. Counsel for the defendant that the mere registration of the trade mark could give no advantage to the plaintiff and he has placed reliance on the judgement of the Apex Court in N.R.Dongre versus Whirlpool Corporation 1996 PTC (16). However, I am of the view that the said citation helps the plaintiff rather than the defendant. In that case, the original registered proprietor was protected against a subsequent claimant of the trade mark and relief was granted against the latter in favour of the former, though at the given time the trade mark stood registered in his favour. Long prior user and the familiarity of the name Whirlpool despite the absence of any production by the Whirlpool Corporation in India was found sufficient to protect their proprietary rights to the trade mark Whirlpool .
816. The Hon'ble High Court in the case of Pfizer Products Inc (supra) has underlined that use would include advertisement in the Trademark Journal newspapers periodicals etc. the point being of entry into the field and of acquisition of reputation in the trade circles of that product, worldwide or even locally. In the instant case, the plaintiff has filed advertisements and bills in respect of advertisement since 1987 onwards , in newspapers and trade magazines. This would reveal the familiarity of the name Focus Vision Care in the business of opticals. It is not possible to believe that the defendant was unfamiliar with the existence of the plaintiff, since the trade magazine has been used by the defendant too to advertise themselves.
17. Much has been said of the absence of goods. The ld.counsel for the defendant submitted vociferously that the plaintiff is not manufacturing any optical goods and so could claim no trade mark. It has also been argued that the defendant was using the name Focus Optical as its corporate name and therefore there was no infringement of the trade mark of the plaintiff. It has been submitted that as regards passing off, relying on several judgements of the superior courts, that where the defendant was able to show that the added matter is sufficient to distinguish his goods from those of the plaintiff. It was submitted that the documents and the photographs placed on the record would suffice to show that 9 the defendant was dealing in optical goods such as Rayban glasses, frames etc. Hence it was submitted that nothing was being passed of as goods of the plaintiff.
18. The ld.counsel for the plaintiff submitted that trade mark in services was provided after the amendment of the Trade Marks Act and Rules in 2002. It has been pointed out the definition of "mark" and "trade mark" under the Act include name too. It has been submitted that the plaintiff was dealing not only in the sale of eye glasses of companies such as Rayban, but also prepared glasses as per the requirements of clients, as prescribed by an ophthalmologist. Therefore the plaintiff was involved in manufacture too. It has been submitted that the use of the name FOCUS by the defendant, would lead an unwary customer to believe that the defendant and the plaintiff were connected and this was sufficient for passing off.
19. It can be clearly seen that the plaintiff and the defendant are doing the same business as opticians. They advertise in the same trade journal and in the newspapers. Thus their target group is the same. The impact of the similarity in the names is to be seen in this context. As seen already, the plaintiff has been granted registration of the trademark of the plaintiff. Whatever be the objection raised by the defendant in respect of the nature of the word "focus" it cannot be overlooked that in 10 1997 the plaintiff was granted the registration of the trademark Focus Vision Care as manufacturers and merchants. Therefore, the plaintiff has the right to use the trademark as his business name too. Besides, it is also to be noted that the plaintiff has not been given a right to the use of the device of optical sign and the expression " Vision Care", thus recognizing the right of the plaintiff to use "FOCUS" exclusively. The defendant has used the same word "FOCUS", which is an essential part of the trademark registered in the name of the plaintiff.
20. As defined under S 2 (m) of the Trade Marks Act 1999, "
Mark" includes name. Under S.2 (zb) of the Act, " Trademark means a mark capable of distinguishing the goods or services of one person from those of the others. The registered trademark of the plaintiff used as the name of his business does distinguish his goods from those of others in the same line of business. As has been reiterated by the H'ble High Court in Pfizer's case, if a party for no apparent or valid reason adopts with or without modifications a mark belonging to another, the court may rightly assume that such adoption was not an honest one. In the case at hand, it is not beyond possibility that the name of the plaintiff business as advertised in the trade magazines appealed to the defendant too. The turnover as mentioned in the plaint reflects the sound business the plaintiff has. It could be justifiably concluded that the defendant 11 wanted to cash in on the reputation of the plaintiff by adopting the essentials of the plaintiff's trademark.
21. Thus the plaintiff has disclosed a prima facie case in his favour. The balance of convenience lies in favour of the plaintiff inasmuchas it has been stated by the defendant in the written statement that it had filed for registration of its mark and the same was pending consideration. If the defendant is permitted to continue to use the trade mark of the plaintiff, it is the plaintiff who will suffer irreparable loss and injury. Impact on business and turnover may possibly be compensated in terms of money, however, there can be no effective compensation for loss of goodwill or the benefit the violator obtains of the goodwill of the plaintiff.
22. I therefore conclude that the plaintiff is entitled for the interim injunction as prayed for. The defendant is restrained from using the word "FOCUS" in its business name or as trademark to manufacture, sell, offer for sale, advertise or deal in optical goods, lenses, frames, artificial eyes, instruments and machines and other goods meant for optical or ophthalmologic purposes till the disposal of the suit. Nothing contained in this order shall be considered as an opinion on the merits of the case. The matter relating to rectification shall, of course be decided by the IPAB, but there shall be no stay of this 12 suit.
23. Application under O39 r 1&2 CPC allowed. Application under S.124 Trade Marks Act 1999 is dismissed.
Announced in the open court on this 17th day of September, 2007.
(ASHA MENON) ADDL. DISTRICT JUDGE, DELHI.