Bombay High Court
Bennett, Coleman And Company Limited. ... vs Golbal India Entertainment Production ... on 7 January, 2020
Author: S.C. Gupte
Bench: S.C. Gupte
7 IA 1-19 in COMIPL 1276-19.odt
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 1 OF 2019
IN
COMMERCIAL IP SUIT (L) NO. 1276 OF 2019
Bennett, Coleman and Company Ltd. & Ors. ..... Plaintiffs
vs
Global India Entertainment Production & Anr. ..... Defendants
......
Mr. Rashmin Khandekar a/w Mr. Anees Patel and Mr. Hardik Sampat
i/b Mr. Anees Patel for Plaintiffs.
Mr. Abhay Gupta for Defendant No.1.
Mr. Vivek Pathak for Defendant No.2.
......
CORAM : S.C. GUPTE, J.
DATED: JANUARY 07, 2020 P.C. :
Heard Learned Counsel for the parties. This Interim Application is made in a Commercial IP Suit, which seeks perpetual injunction restraining the Defendants from infringing registered trademarks of the Plaintiffs. The Plaintiffs also claim relief in respect of passing off of goods on the basis of the same facts. It is alleged that the Defendants have a website, which is displayed in Mumbai and through which sales of offending goods are canvassed by the Defendants.
2. The Plaintiffs claim to be proprietors of the marks 'Miss India' and 'Mr. India'. It is claimed that since 1964, Plaintiff No. 1 has Laxmi Pg 1 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt been conducting beauty pageants under the name 'Miss India'. These pageants have been held year on year and are being held even today. The Plaintiffs have given details of the pageants in Paras 19 to 24 of the plaint. The Plaintiffs have also referred to their promotional exercise in respect of the mark 'Miss India' on their part. These details are to be found in Para 20 read with Exhibits-G1 to G26 of the plaint. The Plaintiffs run a website by the name of www.missindia.in. The Plaintiffs hold numerous registrations of different device and word marks including the words 'Miss India'. Registration certificates in respect of these marks are placed on record as Exhibits-J1 to J38 to the Plaint. The Plaintiffs have also got the mark 'Miss India' registered as a word mark in Class 41 as of 18 th May, 2013. The Plaintiffs also hold a registration certificate dated 25th May, 2019, the registration being effective on and from 1 May, 2014, in Class 41 in respect of their mark 'Mr. India' and claim to be holding similar events for men under the name 'Mr. India'.
3. It is the grievance of the Plaintiffs that they came to know in the month of November 2019 that the Defendants were conducting various audition tests for an event to be held with the use of the name 'Mr. and Miss. India'. (The Defendants had applied for registration of the mark "Global Mr. and Miss India Asia 2019" in Class 41. That application was on the basis of a proposed user. The Court is informed that this application has since been rejected by the trademark registry.) It is submitted that audition tests for the upcoming event have already been conducted at a few centers. The Plaintiffs rely upon Laxmi Pg 2 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt advertisements issued by the Defendants of these events, which disclose that the words "Miss India" and "Mr. India" have been prominently displayed in them as compared to the other features including the use of the word "Global" as part of the announcement. Based on these facts, it is submitted that the Defendants are not only infringing the registered trademarks of the Plaintiffs but also passing off their services as those of the Plaintiffs. The Plaintiffs accordingly pray for a perpetual injunction restraining the Defendants from committing such infringement as well as passing off. The present Interim Application seeks a temporary injunction in terms of the perpetual injunction sought in the Commercial IP Suit.
4. Learned Counsel for Defendant No.1 opposes the application. Relying on the Judgment of Cadila Halth Care Ltd. Vs. Cadila Pharmaceuticals Ltd., learned Counsel submits that what one has to consider in a case like this is the combination of words used in the alleged offending mark, and not just one or a few words used therein, for comparison with the Plaintiff's mark. Learned Counsel also submits that the words Mr. and Miss India are generic and no exclusive right can be claimed in respect of these words by anyone. Learned Counsel also relies upon the disclaimer or restriction in the registration certificates issued by the trademarks registry to the Plaintiffs in respect of some of the word marks, for using the word 'India' separately or in some marks, such as "Femina Miss India" or "Banoongi Main Miss India", use of the words " Miss India" separately. Learned Counsel submits that registration of these marks has been Laxmi Pg 3 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt granted subject to a condition that no exclusive right can be claimed to the use of the words "India" or "Miss India" by the Plaintiffs. Learned Counsel also relies on the Judgment of Delhi High Court in the case of M/s. Three-N-Products Pvt. Ltd. Vs. M/s. Kairali Exports and Anr. Relying on this Judgment, it is submitted that no exclusive right can be claimed to the use of the word Mr. and Miss. India. Learned Counsel for Defendant No.2 adopts the submissions of Defendant No.1 and makes further submissions in support of those.
5. Prima facie it is apparent that the Plaintiffs are not only prior conceivers and users of the words ''Miss India'' and ''Mr. India'', they are also registered proprietors of the trademarks 'Miss India' and 'Mr. India' in various combinations or formats including as plain word marks. It is also apparent that the Defendants make use of the words "Mr. India" and "Miss. India" prominently in their mark "Global Mr. and Miss India" and that such use is likely to lead to confusion in the minds of public that the event proposed by the Defendants is connected with the Plaintiffs' beauty pageants and events held under the marks 'Miss India' and 'Mr. India' by the Plaintiffs.
6. It is no answer to the Plaintiffs' case that the words are generic. The words "Mr.", "Miss" and "India" are all generic, but a combination of these words is certainly not generic. Delhi High Court decision in the case of M/s. Three-N-Products Pvt. Ltd. Vs. M/s. Kairali Exports and Anr. is clearly distinguishable on facts. In that case, the right claimed was with respect to the mark "Ayur" in respect Laxmi Pg 4 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt of various goods. Prima facie the Court was of the view that the word "Ayur" per se was a generic or descriptive word, which was a Sanskrit word meaning life or vital power, derived from Sanskrit religious texts of Vedic Puranas, and the plaintiff could not claim exclusive right to its use. These facts are clearly distinguishable, since the marks here are not 'Mr.' or 'Miss' or 'India' in itself, all of which are generic or descriptive words; the marks here are a combination of these words and that lends a certain distinction or uniqueness to them. The condition in some trademark registration of the Plaintiff, concerning want of exclusive right to use the words "Miss India" and "Mr. India"
does not imply that for a similar event, i.e. a beauty or fitness pageant, a rival operator can use the very trademarks "Miss India" or "Mr. India" to sell or promote his services. In the first place, these restrictions apply to the trade marks registered by the Plaintiffs which contain other words such as "Femina" or " Banoongi Main" in addition to the words "Miss India". As regards the word marks "Mr. India" or "Miss India" themselves, which are registered in Class 41, with which we are concerned in the present case, there is no such disclaimer or restriction spelt out in the registration.
7. Accordingly, there is clearly a prima faice case for protecting the Plaintiff's intellectual right in the subject trade marks. A case of infringement as well as passing off is prima facie made out and the Plaintiffs deserve to be protected by issuance of ad-interim injunctions sought in the Interim Application herein.
8. Accordingly, there will be an ad-interim injunction in Laxmi Pg 5 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt terms of prayer clauses (a) and (b), which are quoted below:
"(a) pending the hearing and final disposal of the present Suit, this Hon'ble Court may be pleased to pass an order of temporary injunction restraining the Defendants, Defendant No.1's directors, partners/proprietors as the case may be, organizers, assigns in business, licensees and franchisees, and any other person or entity claiming rights through it from organizing the event/beauty pageant under the impugned names/titles/marks GLOBAL MISS INDIA WORLDWIDE 2019, GLOBAL MR. INDIA WORLDWIDE 2019 and/or GLOBAL MR. & MISS INDIA ASIA 2019 or any other names/titles bearing the trademarks/titles MISS INDIA or MISS INDIA formative trademarks or MR. INDIA or MR. INDIA formative trademarks or any other trademark of the Plaintiffs for organizing any event/beauty pageant or for any other purposes, in any manner including advertising/promoting through their website, https://globalindiaentertainmentproduction.com/ or by any other means, or dealing in any manner, directly or indirectly whatsoever, for any other goods or services or any other mark identical/deceptively similar to the Plaintiffs registered trademarks MISS INDIA, MISS INDIA formative marks, MR. INDIA and/or MR. INDIA formative trademarks as delineated in Exhibits - J1 to J37 and Exhibit - J38 and Exhibits - O1 to O13 amounting to infringement of the Plaintiffs' registered trademarks, and/or dilution;
(b) pending the hearing and final disposal of the present Suit, this Hon'ble Court may be pleased to pass an order of temporary injunction restraining the Defendants, its Defendant No.1's directors, partners/proprietors as the case may be, organizers, assigns in business, licensees and franchisees, and any other person or entity claiming rights through it from organizing the event/beauty pageant under the impugned names/titles/marks GLOBAL MISS INDIA WORLDWIDE 2019, GLOBAL MR. INDIA WORLDWIDE 2019 and/or GLOBAL MR. & MISS INDIA ASIA 2019 or any other names/titles Laxmi Pg 6 of 7 ::: Uploaded on - 17/01/2020 ::: Downloaded on - 08/06/2020 00:14:30 ::: 7 IA 1-19 in COMIPL 1276-19.odt bearing the trademarks MISS INDIA or MISS INDIA formative trademarks or MR. INDIA or MR.
INDIA formative trademarks or any other trademark of the Plaintiffs for organizing any event/beauty pageant or for any other purposes, in any manner including advertising/promoting through their website, https://globalindiaentertainmentproduction.com/ or by any other means, or dealing in any manner, directly or indirectly whatsoever, for any other goods or services or any other mark identical/deceptively similar to the Plaintiffs registered trademarks MISS INDIA, MISS INDIA formative marks, MR. INDIA and/or MR. INDIA formative trademarks as delineated in Exhibits - J1 to J37 and Exhibit - J38 and Exhibits - O1 to O13 as may lead to confusion or deception amounting to passing off of the Defendants' business/services as those of the Plaintiffs' or may constitute acts of unfair competition;"
9. Reply, if any, to the Interim Application to be filed within a period of four weeks from today. Rejoinder, if any, within two weeks thereafter. Interim Application to come up for hearing in due course.
10. Learned Counsel for the Defendants submits that his client may be permitted to conduct events proposed by them with addition of some other words between the words "Mr. and Miss" and "India".
The Defendants will have to prepare a concrete proposal for such addition. They may then move for variation of this order, preferably after discussing such concrete proposal in advance with the Plaintiffs.
( S.C. GUPTE, J. )
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