Calcutta High Court
Kas Zainulabdin & Co vs Gokul Chand Manoj Kumar And Sons (Gm & ... on 17 September, 2024
OCD-9
ORDER SHEET
IA No. GA-COM/1/2024
In IP-COM/26/2024
IN THE HIGH COURT AT CALCUTTA
COMMERCIAL DIVISION
ORIGINAL SIDE
KAS ZAINULABDIN & CO.
VS
GOKUL CHAND MANOJ KUMAR AND SONS (GM & SONS) PRIVATE
LIMITED & ANR.
BEFORE:
The Hon'ble JUSTICE KRISHNA RAO
Date : September 17, 2024.
Appearance:
Mr. Rudraman Bhattacharyya, Adv.
Mr. Suryaneel Das, Adv.
Mr. Satyaki Mukherjee, Adv.
Mr. Akash Munshi, Adv.
Mr. Aditya Mondal, Adv.
Ms. Srishti Das, Adv.
Mr. Chiranjit Pal, Adv.
... for the plaintiff
The Court: Mr. Rudraman Bhattacharyya, learned Advocate, is
appearing for the plaintiff.
The plaintiff has filed the present application being GA-
COM/1/2024 praying for ad interim injunction.
The plaintiff is a partnership firm and involved in the
manufacturing and marketing of textile goods such as lungi, vest, briefs
etc. The plaintiff has obtained registration mark of '999' under Class 24 for
lungi, sarongs, kailies, dhotis, gamchas, dupattas and handkerchiefs.
Plaintiff has obtained the following registration mark under class 24 :
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Sr Trade Trade Class Date of User Date Status
No. mark mark Application
No.
1. 545110 24 11/01/1991 Proposed to Registered
be used
2. 1236083 24 12/09/2003 01/01/1982 Registered
3. 5254029 24 20/12/2021 01/01/1976 Registered
The plaintiff has also obtained the registration mark of '999'
under Class 24 for lungies and other materials at Tamil Nadu and
Maharashtra on 11th February, 1991.
The plaintiff has disclosed that the revenue which the plaintiff has
earned for the year 2022-23 is Rs.66,56,56,875/-. The plaintiff has also
disclosed invoices to show that the plaintiff is selling lungi under the mark
'999' since the month of November 2010. The plaintiff has made the
expenditure for advertisement of its product for the year 2022-23 is Rs.
92,90,059/-.
The defendant no. 1 has made an application before the
Trademark Authority for registration of the device mark '099' under Class
24 being application number 6262926 on 17th January, 2024. In the said
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application the defendant no.1 has disclosed the user details as "proposed
to be used". When the plaintiff came to know about the said application,
the plaintiff has made an objection and the defendant no.2 has submitted
his affidavit wherein he has stated that the defendant no.2 adopted the
caption mark '099' in relation to the product in the year 2024, the
defendant no.2 has also mentioned that the applicant has been prior user
than that of the opponent.
Counsel for the plaintiff has drawn the attention of this Court
that the defendant no.2 is selling lungi under the mark '099' from online
sale through India Mart. The plaintiff has also disclosed the invoice of the
defendant no.1 dated 19th July, 2024 which shows that the defendant no.1
is selling the lungi under the mark '099' as well as '999'.
Counsel for the plaintiff submits that the mark which the
defendants are using for selling of lungi being '099' is deceptively similar to
the mark of the plaintiff's '999'. The plaintiff has produced the product of
the defendants which reveals the mark of '099'. The plaintiff has also
produced the materials of the plaintiff having the mark '999'.
The defendants are utilizing the deceptively similar marks on its
goods, as part of its packaging and trade dress. The defendants are not only
infringing upon the registered trade mark of the plaintiff but also seeking to
pass off its product as that of the product of the plaintiff.
Counsel for the plaintiff submits that the defendant no.2 was the
ex-dealer of the plaintiff with respect of lungi having the mark of '999' and
the defendant had the knowledge of the plaintiff's registered trademark is
'999' but in spite of having the knowledge, the defendant has applied for
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the registration of the mark '099' having the similar getup and deceptively
similar to that of the mark of the plaintiff and in the opposition the
defendant no.2 has deliberately mentioned that the defendant is only user
of the said mark.
Heard the learned counsel for the plaintiff. Perused the materials
on record.
It is found from the record that the plaintiff has applied for the
mark '999' for the first time on 11th February, 1991 in the State of Tamil
Nadu and Maharashtra. Subsequently, on 12th September, 2003 for the
mark '999' with the user details as of 1st January, 1982 and the same was
duly granted by the concerned authority with effect from 12th September,
2003 which is valid up to 12th September, 2033.
The plaintiff has also applied for registration on 20th December,
2021 which was duly granted to the plaintiff on 15th March, 2023. The
document which the plaintiff has produced to show that the plaintiff is
selling lungi under the mark '999' since the year 2010. In the application
filed by the defendant for registration of the device mark '099', the
defendants have mentioned that the user details are proposed to be used
but the invoice produced by the plaintiff shows that the defendant is selling
lungi under the marks '099' and '999'.
This Court has compared the marks of the plaintiff and the
defendants which are as follows :
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Petitioner's mark Respondents' mark
Considering the above, this Court finds that the defendants are using the mark deceptively similar to the mark of the plaintiff's '999'. The trade dress and packaging is also identical and similar to that of the plaintiff.
The defendant in the application has also admitted that they propose to use the said mark but the document relied by the plaintiff shows that the plaintiff is the prior user and is having the registration mark and using the said mark since 1992 initially in the State of Maharashtra and now the plaintiff is selling in all over India and obtained several trademarks.
This Court also finds that the defendant no.2 was the dealer of the plaintiff and the defendant no.2 had the knowledge that the plaintiff is having the mark '999'. In spite of having the knowledge, only to confuse the general public, the defendant has applied for registration of the same mark and also started selling their product deceptively similar to that of the mark 6 of the plaintiff. The defendants also adopted the same getup which may lead to confusion in the mind of the general public.
Counsel for the plaintiff has relied upon the judgment in the case of Laxmikant V. Patel vs. Chetanbhai Shah and Another reported in (2002) 3 Supreme Court Cases 65 and submitted that once the case of passing-off is made out the practice is generally to grant ex parte injunction followed by appointment of local Commissioner.
Counsel for the plaintiff has also relied upon the judgment in the case of Assam Roofing Ltd. & Anr. vs. JSB Cement LLP & Anr. reported in 2015 OnLine Cal 6581 and submitted that where defendant's mark is identical with the plaintiff's mark, the plaintiff, in such a situation, would not be required to prove his use of the said mark which is identical to the plaintiff's mark in respect of the goods which are covered by the plaintiff's registration.
Counsel for the plaintiff has also relied upon the judgment in the case of R. R. Proteins and Agro Limited vs. Hari Shankar Singhania & Another reported in 2010 SCC OnLine Cal 2014 and submitted that when the plaintiff has the word mark in the same class of goods incorporated in the defendants' mark, it is for the defendants to establish that their use of one or more words in addition to the plaintiff's word mark would remove the defendants' mark from the prohibited umbra of what is deceptively similar.
Counsel for the plaintiff has also relied upon the judgment in the case of M/s. Vrajlal Manilal & Co. vs. Adarsh Bdi Co. reported in 1995 SCC OnLine Del 73 and submitted in the said case also the plaintiff was 7 having the registered trademark of '22' and subsequently, the defendant has obtained the trademark of '122' and using the deceptively similar mark of the plaintiff and the Hon'ble Court has granted interim order to the plaintiff.
Considered the submission made by the counsel for the plaintiff. Perused the materials on record and the judgments by the plaintiff.
This Court finds that the plaintiff is the prior user of the mark '999' with respect of lungi and the defendants had the knowledge that the plaintiff is having the registered mark of '999' as the defendant no.2 was a dealer of the plaintiff in respect of the said lungi. In spite of having the knowledge, the defendant has applied for the registration of the mark '099' which is deceptively similar to that of the mark of the plaintiff. In the opposition the defendant has wrongly made the statement that he is the prior user though the defendant has the knowledge that the plaintiff is the prior user.
The defendants have knowingly, deliberately and dishonestly adopted the mark to take undue advantage of the immense reputation and goodwill acquired by the plaintiff with respect of mark "999" to make undue profit with the intention to pass off its goods as that of the plaintiff.
Considering the above, this Court finds that the plaintiff has made out a prima facie case and the balance of convenience and inconvenience in favour of the plaintiff. If at this stage, an ad interim order of injunction is not granted, the plaintiff will suffer irreparable loss and injury.
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Accordingly, the defendants, their men, servants, agents, assigns, stockists, distributors and all such persons involved with the respondents are restrained from infringing and/or enabling others to infringe in any manner whatsoever, by way of manufacturing and/or marketing and/or processing and/or selling and/or advertising and/or dealing with lungi, vests, briefs or allied/cognate products, by using the mark " ", or any other identical and/or similar and/or deceptively similar trade mark to that of the plaintiff's mark " "or any other trade mark which is identical and/or similar and/or deceptively similar to the said mark of the plaintiff till 19th November, 2024.
The defendants and/or their men, servants, agents, assigns, nominees, representatives and/or any other person on their behalf are also restrained from passing off their inferior quality products bearing the marks of the defendants " " by using, manufacturing, selling, offering to sell, advertising, marketing and promoting in electronic media or interactive websites or otherwise dealing in goods bearing the defendants' mark consisting of the plaintiff's mark 9 " " or any other identical or deceptively similar mark in any form whatsoever till 19th November, 2024.
The plaintiff is directed to serve the copy of the application along with plaint and documents and to file affidavit of service on the returnable date.
List the matter on 19th November, 2024.
The Advocate on record of the plaintiff is given liberty to communicate the gist of the order to the defendants for compliance.
(KRISHNA RAO, J.) RS