Bombay High Court
Prince Pipes And Fittings Limited vs Prince Platinum Pipes And Fittings ... on 10 March, 2021
Author: G. S. Patel
Bench: G.S. Patel
17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX
Shephali
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 5290 OF 2021
IN
COMMERCIAL IP SUIT (L) NO. 5286 OF 2021
Prince Pipes And Fittings Ltd ...Plaintiff
Versus
Prince Platinum Pipes And Fittings (A-Division of
Vigor Plast India Pvt Ltd) & Ors ...Defendants
Dr Veerendra Tulzapurkar, Senior Advocate, with Hiren Kamod,
Amit Jajoo, Nirav Parmar, Darpan Bhatia, Prem Khullar &
Aayush Modi, for the Plaintiff.
CORAM: G.S. PATEL, J
DATED: 10th March 2021
PC:-
1.Dr Tulzapurkar tenders a draft amendment. It is taken on Shephali record. Since this has been drafted by Mr Kamod, it is marked "K1" Mormare for identification with today's date. The amendment is permitted. It Digitally signed by Shephali is to be carried out by Friday, 12th March 2021. without need of re-
Mormareverification.
Date: 2021.03.11 10:31:46 +0530
2. Dr Tulzapurkar seeks to move for ex parte ad-interim reliefs on the basis of the averments in paragraph 32 of the Plaint. I have seen Page 1 of 13 10th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX those averments and the other material. I believe there are sufficient reasons for moving. I say this because on 25th May 2017 the Plaintiff send the Defendant a cease and desist notice in regard to the offending rival mark. The Defendant replied on 16th June 2017 with denials and on 27th August 2018 actually applied for registration of the rival marks. The Plaintiff opposed this registration on 19th December 2018. Those proceedings have carried on but the Defendants have not produced any evidence of use. The Plaintiff also did not find the rival products in the market until as recently in January 2021. This is the reason it now becomes imperative that the reliefs sought be granted.
3. The Suit seeks reliefs in trade mark infringement and passing off. The Plaintiff uses the mark PRINCE in conjunction with a crown device as a registered trade mark in relation to its PVC pipe products. The adoption of the mark itself goes back to 1996. The Plaintiff has obtained a series of registrations from 2014 onwards of the PRINCE mark and logo. There can be no doubt that in the registered marks, the word PRINCE is the central, memorable, striking and most notable feature. The amendment permitted today shows that there is a disclaimer in regard to the word PRINCE of only one of those registrations. There is no such disclaimer for the others. I do not even pretend to understand the purport of that disclaimer because ex facie the word PRINCE in relation to something as plebian as PVC Pipes is surely deserving a recognition of distinctiveness. Over time, the goods have been described by the Plaintiff as "Piping Systems". The PRINCE mark is prominently displayed on every unit or segment of the supplied products. The necessary documents in relation to the registrations are annexed.
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4. As to the question of usage, in 2019-2020 the annual sales were Rs.15,144.77 million and the expenditure on publicity and sales was Rs. 314.58 million. These figures are also reflected in Chartered Accountant's certified statements. There are other publicity materials annexed. The Plaint says that a popular actor has been engaged as a brand ambassador. The products have been widely advertised and there is a claim of having won several awards.
5. A further indicator of distinctiveness is that the Plaintiff has used without objection the mark PRINCE as part of its corporate online domain name and corporate identity. Its website is at the URL www.princepipes.com.
6. This is the reason the Plaintiff says that its products have achieved distinctiveness, come to be associated exclusively with the Plaintiff and have garnered considerable reputation and goodwill. For these reasons, the Plaintiff is entitle to statutory and common law protection.
7. Sometime in May 2017, the Plaintiff's trade mark Attorneys learnt that the 3rd Defendant had applied for registration of the mark PRINCE platinum under No. 3251551 in Class 17 in respect of substantially the same product lying as the Plaintiff. Now, the Defendants' application was for the word PRINCE with the word platinum. The two words were set in a lozenge shaped device. The word PRINCE was rendered in all caps and italics, very nearly as the Plaintiff does. The word platinum has a suffix was in a lower case handwritten script font. The Plaintiff also found that the 3rd Page 3 of 13 10th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX Defendant had run up a website at the domain name http://princeplatinumpipe.com.
8. Let me just take two rival marks side by side in their simplest form i.e. PRINCE with the crown device and PRINCE PLATINUM. This is the Plaintiff's mark:
And this was the Defendant's mark:
9. First impressions matter. Indeed, in this branch of the law perhaps first impressions are perhaps all that matter. If one goes by this, then there is no manner of doubt that what stands out in both marks is nothing but the word PRINCE. It is central to both marks. It is the one feature that most draws the eye and captures attention. Indeed, Dr Tulzapurkar may well be correct in his submission that the average purchaser of the product might be deceived and actively mislead into imagining that the Defendants' product is the "premium" or "superior" or "deluxe" version of the Plaintiff's own product. Thus, confusion as to source, manufacturer, origin and provenance are not only likely but are writ large on the face of it.
10. In any case, to return to factual narrative, on seeing this application the Plaintiff's trade mark attorneys sent a cease and desist notice on 25th May 2017. The Plaintiff put the Defendant No. 3 to Page 4 of 13 10th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX actual and not just constructive, notice of the Plaintiff's prior use, prior registration, statutory rights and common law claims. They also made a demand that the Defendant No. 3 discontinue use of its website.
11. Defendant No. 3 replied on 16th June 2017. He claimed that the two marks were not dissimilar. A copy of the Plaintiff's notice and the Defendants' reply are at Exhibit 'K' and Exhibit 'L' to the Plaint.
12. Now, while the cease and desist notice follows the usual form, the reply from Defendant No.3 at Exhibit 'L' from pages 214 to 224 makes for interesting reading. Here, the Defendant No. 3 first stated that he had adopted his mark "since long" but did not say since when and nor did he claim any actual date of user. There was the reference to one of the Plaintiff's disclaimed marks but that is all. The 3rd Defendant claimed that the two marks are entirely distinct, but for reasons that suggest themselves, the 3rd Defendant seemed to restrict his response to a comparison between the 3rd Defendant's mark PRINCE platinum mark and one of the Plaintiff's mark for PRINCE AQUA SYSTEM that has an entirely distinct logo and device (and for which there was a disclaimer). The reply actually provides no answer at all to the registration of the principal mark of the Plaintiff, shown above. This silence or failure to respond is undoubtedly a telling circumstance.
13. The Plaint goes on to narrate that the Plaintiff did not find even at that time any goods with the Defendants' marks in the market. The 3rd Defendants' application was published on 27th August 2018 in Page 5 of 13 10th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX the Trade Marks Journal. On 19th December 2019, the Plaintiff filed its notice of opposition. On 12th January 2019, the 3rd Defendant filed a counter statement reiterating its stand. Then the Plaintiff filed evidence in support of its opposition under Rule 45 of the Trade Mark Rules 2017. Defendant No. 3 filed its own evidence under Rule 46 and the Plaintiff responded with countering evidence under Rule 47.
14. The Plaint states in paragraph 17 at page 17 that in all the evidence produced by the 3rd Defendant before the Trade Marks Registry, there is not a single document showing any use of the impugned mark. This is to be read with Plaintiff's assertion both here and in the Registry that the Plaintiff has found no use of the impugned mark. Even more telling is a circumstance that the 3rd Defendant actually took down or abandoned its use of the website and the domain name princeplatinumpipe.com.
15. Paragraph 18 of the Plaint says that on 4th January 2021 (the error in the Plaint is corrected by amendment), the Plaintiff received a communication from one of its dealers. The averment in this paragraph is important because the complaint, a copy of which is at Exhibit "O" says specifically that the complaint was about the shoddy quality of the "Plaintiff's 'Platinum' range of Products". The Plaintiff does not have a platinum range products. This document at Exhibit 'O' at page 228 is the clearest possible prima facie proof of deception and confusion that one could possibly ask for. This is therefore no longer a question of mere likelihood of deception or confusion. There is strong prima facie material showing that actual deception and confusion has in fact already taken place. If this be so, then clearly there is a need to grant urgent ad-interim reliefs.
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16. But there is yet more because it is now found that the Defendants have another iteration of their online presence and have taken up the domain name www.princeplatinumplastindia.com. Thus, having first taken up a domain name with the word PRINCE in it for PVC Pipes, and then having abandoned it, the Defendants have now come up with a new name said to be reflective of their corporate or trading name Prince Platinum Pipe and Fittings.
17. The 3rd Defendant is a director of the 2nd Defendant. The 1st Defendant is a division of the 2nd Defendant. These are online official records.
18. Paragraph 21 compares the two products. I have samples before me. Anyone would be confused. Anyone would be cast in to a state of, as the classic law says, "wonderment". Anyone would be lured into believing that the PRINCE platinum product is in fact from the house of the Plaintiff.
19. I note that the actual product that is before me (not very clear in the photograph), the Defendants have inserted the trade mark symbol 'TM' after the word "PLATINUM".
20. Importantly, now the word is not rendered in a flowing script but in a mixed case regular lettering, thus:
Page 7 of 1310th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX This only makes matter worse, because the point of distinction claimed in correspondence in 2017 now no longer exists. The impression very clearly is that Platinum is a product one notch superior in quality to the regular range of the Plaintiff's products; when in fact the complaint at Exhibit 'O' indicates quite the reverse.
21. Very little more really needs to be said on the question of whether or not the Plaintiff has a prima facie case. The defence that these are distinct or distinguishable marks does not commend itself in the least. There is ample evidence now of actual confusion and deception.
22. Dr Tulzapurkar would be justified in paraphrasing the famous line from the classic movie Casablanca: "of all the words in all the world, the Defendants had to choose mine" for its PVC products. There is no explanation why, even if one wanted to adopt royalty, the Defendants should have chosen prince, rather than king, emperor, queen. Obviously, the attempt is to trade upon and cash in on the reputation and goodwill built up and hard won by the Plaintiff.
23. The balance of convenience must be held to be with the Plaintiff. I would imagine that quite considerable harm has probably already been caused to the Plaintiff. Further damage must be avoided. This is an exceptionally strong case in my prima facie view for the grant of urgent ad-interim reliefs.
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24. There will, accordingly an order in terms of prayer clauses (a),
(b) and (c). The prayers are reproduced below but without the graphic images.
"(b) that pending the hearing and final disposal of the suit the Defendant by themselves, their proprietors, directors, partners, servants, agents, dealers be restrained from using the impugned trade marks "PRINCE PLATINUM", the impugned domain name "www.princeplatinumplastindia.com" and/or impugned business name "Prince Platinum Pipe & Fittings" and/or any other impugned mark/domain name/business name/trading style containing the word PRINCE and/or any other trade mark, domain name or business name/trading style identical with and/or deceptively similar to the Plaintiff's well-known trade mark "PRINCE" in respect of its business and/or pvc agri pipes & fittings pvc plumbing pipes & fittings pvc casing pipes, pvc rising main pipes, pvc cable ducts, hdpe pipes & fittings thereof and/or same or similar goods so as to pass off or enable others to pass off the Defendants' impugned goods and/or business as and for the Plaintiff's well-known goods and/or business, or in any other manner whatsoever;
(c) that pending the hearing and final disposal of the suit the Court Receiver, High Court, Bombay be appointed under Order XL Rule 1 of Civil Procedure Code, 1908 as the Receiver of the Defendants' goods, stamps, printing materials, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printed matter, things and such material and documents of the Defendants bearing or containing the impugned trade marks "PRINCE PLATINUM", the impugned domain name "www.princeplatinumplastindia.com" and/or impugned business name "Prince Platinum Pipe & Fittings" with all Page 9 of 13 10th March 2021 17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX powers to enter in the premises of the Defendants and/or their proprietors, directors, partners, servants, agents, dealers, stockists and distributors at any time of the day or night (even on Sundays and holidays) without notice to the Defendants and/or their proprietors, directors, partners, servants, agents, dealers, stockists and/or distributors and with the help of the police / local police authorities if necessary, to seize and take charge, possession and control aforesaid material in possession and control of the Defendants and / or of the impugned goods bearing the impugned trade marks "PRINCE PLATINUM", the impugned domain name "www.princeplatinumplastindia.com" and/or impugned business name "Prince Platinum Pipe & Fittings" and also to take charge and possession of all other goods, records (printed and electronic), account books showing manufacture, stock and/or sale of the impugned goods bearing the impugned trade marks "PRINCE PLATINUM", the impugned domain name "www.princeplatinumplastindia.com" and/or impugned business name "Prince Platinum Pipe & Fittings" in possession and control of the Defendant and/or their proprietors, directors, partners, servants, agents, dealers.
25. The Court Receiver, High Court, Bombay will not insist upon production of a hard copy of this order but will act on production of a soft copy digitally signed.
26. This order is not to be uploaded until the Court Receiver executes his commission under prayer clause (c) above. The Court Receiver is to visit each of the locations of the Defendants and is to seize and seal all counterfeit products of the Defendants. These products will be retained in the Defendants' premises for the present.
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27. In addition to this, the Additional Special Receiver will need to be required for a visit to one of the addresses as the current travel restrictions make it difficult for the Court Receiver's representatives to go to and from that State.
(a) The counsel for the Plaintiff has given me name of an advocate in Gujarat, who can be appointed Additional Special Receiver to assist the Court Receiver attached to this Court.
(b) Mr Raval Pinakin, is appointed as the Additional Special Receiver to execute the order in terms of prayer clause
(c).
(c) The fees of the Additional Special Receiver for executing this commission is fixed at Rs. 25,000/- per day or part thereof. These fees will be paid by the Plaintiff in the first instance, but the Plaintiff is at liberty to seek these costs at the final hearing of the suit.
(d) It is clarified that the Court Receiver, High Court,
Bombay also stands appointed, and that the
appointment of Mr Raval Pinakin is only for
convenience.
(e) The Additional Special Receiver will submit his report
by email to the Court Receiver, High Court, Bombay at the following email ids: [email protected] with a cc to [email protected].
(f) The contact details of the Additional Special Receiver are as follows:
Name Mr Raval Pinakin
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10th March 2021
17-IAL-5290-2021 IN COMIPL-5286-2021.DOCX Address Shashi Sadan, Digvijay, Plot No. 20, Digvijay Plot, Jamnagar, Gujarat 361 005 Mob. +919428668684 Email ----
(g) Execution and Implementation of the Order:
(i) The Additional Special Receiver is empowered and authorized, acting on an authenticated copy of this order, to take the assistance of the local police authorities in the execution of this commission.
(ii) The police authorities concerned are directed to act on production of a digitally signed copy of this order.
(iii) The Court Receiver will issue the necessary letter of authority to enable the local police to act.
(iv) The Additional Special Receiver is directed to seize and seal all infringing goods bearing the pirated artworks, make an inventory of such seized goods.
(v) The Additional Special Receiver may, if necessary, break open any locks with the assistance of the police.
(vi) The Special Receiver is to visit each of the locations of the Defendants and is to seize and seal all counterfeit products of the Defendants.
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(vii) These products will be retained in the Defendants' premises for the present.
28. In the facts and circumstances of the case, the Court Receiver, High Court, Bombay, will not insist upon production of a hard copy of this order but will act on production of a soft copy digitally signed.
29. This order is not to be uploaded until the Court Receiver and the Additional Special Receiver have executed their commissions as stated above. The order will be uploaded after this order is fully executed.
30. The Plaintiff will comply with the provisions of Order 39 Rule 3 within 14 days of the Court Receiver and the Additional Special Receiver completing executing of their commissions under this order.
31. Liberty to the Defendants to apply for a variation, modification or recall of this order after at least six clear working days' notice to the Advocates for the Plaintiff.
32. The Court Receiver will submit his Report to the Court on or before 14th June 2021.
33. This order will be digitally signed by the Private Secretary of this Court. All concerned will act on production of a digitally signed copy of this order.
(G. S. PATEL, J) Page 13 of 13 10th March 2021