Gujarat High Court
Stillman Fashion vs Steel All Male on 29 January, 2019
Author: G.R.Udhwani
Bench: G.R.Udhwani
C/AO/27/2019 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 27 of 2019
With
CIVIL APPLICATION NO. 1 of 2019
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STILLMAN FASHION
Versus
STEEL ALL MALE
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Appearance:
MR DIPEN S THAKKAR(5607) for the PETITIONER(s) No. 1,2,3,4
MR TUSHAR L SHETH(3920) for the PETITIONER(s) No. 1,2,3,4
for the RESPONDENT(s) No. 2
MR JATIN Y TRIVEDI(2616) for the RESPONDENT(s) No. 1
PRATIK K CHAUDHARY(8359) for the RESPONDENT(s) No. 1
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CORAM: HONOURABLE MR.JUSTICE G.R.UDHWANI
Date : 29/01/2019
ORAL ORDER
ADMIT.
(G.R.UDHWANI, J) ORDER IN CA No.1 of 2019 in AO No.27 of 2019 Dispute in the suit is relation to the infringement of the trademark. While the plaintiff has been using the trademark 'Steel All Male'; the defendant who is involved in the same business i.e. clothe has been using the mark 'Stillman'. The notice came to be issued by the plaintiff to the defendant on 30/09/2013 requiring the defendant to desist using his mark; which was replied to by the defendant on 07/10/2013 insisting upon his right to use the mark 'Stillman'. The defendant thus made his intentions very clear in the reply to the notice. It appears that the plaintiff was satisfied with the reply and did not take any action for about 15 months and allowed the defendant to use the mark 'Stillman' consciously; allowed him to change his position, make more investments, etc. A lame excuse however was recited Page 1 of 4 C/AO/27/2019 ORDER in the pleadings stating that since the goods of the defendant were no more found in the market after the notice, it was presumed that he had stopped the use of mark. Having regard to insistence by that defendant in the reply to notice, that he was entitled to use the trademark, there was no reason for the plaintiff to harbour such an excuse. Morever, the excuse prima facie, appears to be false to the knowledge of the plaintiff; inasmuch as; it is his case that the mark 'Stillman' was being used by the defendant on C.G. Road since the year 2013; but it is not his case that the shop with the brand viz., 'Stillman' was closed immediately after reply to the notice. Thus, the shop was in existence.
One of the considerations for exercise of discretion under O.39 of Code of Civil Procedure (for short CPC) is the delay, latches or waiver or acquiescence. If the plaintiff is not found vigilant for protection of his right, the Court cannot come to his aid by exercising discretion in his favour; particularly, when consciously and with knowledge, the plaintiff allowed his adversary to alter his position and acquire reputation in the market by use of the disputed mark. Such conduct of the plaintiff could not have been ignored; the Court would not, under such circumstances, by mere stroke of a pen, issue such an injunction which would cause more harm and inconvenience to the adversary than serving the ends of justice for the plaintiff.
That apart; the two marks are poles apart; phonetically and visually. 'Stillman' comprises of one Page 2 of 4 C/AO/27/2019 ORDER word as compared to 'Steel All Male' which is a phrase comprised of three words. 'Stillman' and 'Steel All Male' when spoken, would phonetically sound different. Even, visually; word 'Stillman' can easily be distinguished from the three words 'Steel All Male'. Furthermore, the design insofar as word 'Steel' is concerned, as used by the plaintiff is typical; viz., 'STEƎL'. This typical distinction is also easily discernible and would attract the attention of a person.
Again, the letter (i) in 'Still' does not have emphasis like the word 'Steel'. 'Still' is a short pronouncement; whereas 'Steel' is longer than that.
Prima facie, the trial Court appears to have committed a serious error in injuncting the defendant using his mark 'Stillman'. Dormancy on the part of the plaintiff; not taking an action for a period of 15 months would justify the defendant to continue use of the disputed mark and expand the business and acquire reputation. Under such circumstances, grant of injunction would cause more harm and inconvenience to the defendant rather than the plaintiff.
The decisions relied upon by the plaintiff were delivered in different set of facts. In Midas Hygiene Industries P. Ltd., & Anr. vs. Sudhir Bhatia & Ors., rendered by Apex Court in Civil Appeal No.107 of 2002, the question of acquiescence was not involved and the trademark involved therein when phonetically and visually similar i.e. Laxman Rekha and Magic Laxman Rekha. In Rupa Page 3 of 4 C/AO/27/2019 ORDER & Co. Ltd., Vs. Dawn Mills Co. Ltd., rendered by this High Court in A.O. No.48 of 1998 with CA No.1010 of 1998, although it was observed that the delay by itself cannot be a ground for refusing exercise of discretion in the matter of granting of injunction; but it is one of the considerations. As indicated above, in the instant case, the delay is not the only question.
For the foregoing reasons; the impugned order is required to be stayed. Accordingly, interimrelief in terms of paragraph 9(a) is granted. Civil Application is disposed of.
(G.R.UDHWANI, J) SOMPURA Page 4 of 4