Calcutta High Court
Vinay Parolia vs K. S. Impex And Ors on 20 November, 2019
Author: Debangsu Basak
Bench: Debangsu Basak
OC-4
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
G.A. No. 2140 of 2019
With
C.S. No. 180 of 2019
VINAY PAROLIA
Versus
K. S. IMPEX AND ORS.
BEFORE:
The Hon'ble JUSTICE DEBANGSU BASAK
Date : 20th November, 2019.
Appearance :
Mr. Rudraman Bhattacharya, Adv.
Mr. L. Vishal Kumar, Adv.
Mr. Rajesh Upadhyay, Adv.
Mr. Sourojit Dasgupta, Adv.
...for the petitioner Mr. Ranjan Bachawat, Sr. Adv.
Mr. Prithviraj Sinha, Adv.
Mr. Anupam Dasadhikari, Adv.
Mr. Krishnendu Paul Chowdhury, Adv.
..for the defendants The Court : The plaintiff seeks interim relief against the defendants in a suit of infringement and passing of.
Learned Advocate appearing for the plaintiff submits that, the defendants are guilty of infringing the registered label and trade mark of the plaintiff, namely, "ADVANCE" and "ADVANCE GEAR" respectively by using deceptively similar words for their products.
Learned Advocate appearing for the plaintiff draws the attention of the Court to the label which the plaintiff obtained registration on January 9, 2006. He submits that, a distinctive mark was registered as a label. He refers to 2 registration of the trade mark "ADVANCE GEAR" with the distinctive logo on March 17, 2009. He draws the attention of the Court to the application made by the defendants for registration of the trade mark. He submits that, the registration was made on November 16, 2017. He draws the attention of the Court to the contents of the application. He submits that, according to the defendants, the trade mark which the defendants applied for registration was proposed to be used. Therefore, such proposed trade mark was not in use by the defendants prior to the making of the application. He submits that, the trademark which the defendants proposed registration contains the word "ADVANCE PRO". The defendants have been used "Pro" in very small size in the entire set up. The same was done to deceive the public in general into believe that the product of the defendants is that of the plaintiff. The word is similar to the one which is used by the plaintiff much prior in point of time. He produces the products of both the parties and submits that, the packaging used by the defendants is deceptively similar to the one of the plaintiff. The same colour combination is used by the defendants as that of the plaintiff. According to him, any person of average intelligence with imperfect recollection will be deceived by the product of the defendants. He relies upon All India Reporter 2016 Calcutta 41 (Assam Roofing Ltd. & Ors. v. JSB Cement LLP & Ors.), 2006 Volume 8 Supreme Court Cases 726 (Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel & Ors.), 2010 Volume 3 CHN 912 (R.R. Proteins and Agro Limited v. Hari Shankar Singhania & Anr.) as well as 2014 (2) AIR Bom R 142 (Pidilite Industries Limited v. Jubilant Agri & Consumer Products Limited) in support of his contentions.3
Learned Advocate appearing for the defendants submits that, the plaintiff is guilty of suppression of material facts. He relies upon an order passed in a suit filed by the plaintiff before the Alipore Court and an order passed on appeal in the High Court. He submits that, the plaintiff failed to obtain any interim relief in a similar proceeding against another party. He seeks directions for filing affidavits. He relies upon a bunch of documents showing registration of the word "ADVANCE" as a trade mark. According to him, the mark "ADVANCE" is not exclusive. He also relies upon a package of the product of the plaintiff to submit that, the plaintiff changed the get up of the package of its product subsequently. He relies upon Section 17 of the Trade Mark Act, 1999 to contend that the plaintiff cannot claim any exclusivity.
Learned Advocate appearing for the plaintiff submits that, in the facts of the present case, Section 17 of the Act of 1999 is not attracted. Since, there is a registration mark in favour of the plaintiff and since, the plaintiff is the prior user, admittedly, on the basis of the documents as disclosed, the plaintiff is entitled an order of injunction, if not an order directing the defendants to maintain accounts.
The plaintiff claims to be in the business of manufacturing and marketing of machine and machine tools. The plaintiff claimed to have coined and adopted an innovative and distinctive mark containing the word "ADVANCE". According to the plaintiff, such word distinguishes the product of the plaintiff in the market. Any deceptive user of such word "ADVANCE" including the defendants will tantamount to the right vested upon the plaintiff being infringed. The plaintiff claims that the word "ADVANCE" as a label was registered and that, the word 4 "ADVANCE GEAR" was also registered as a trade mark. The plaintiff is the prior user of the trade mark "ADVANCE PRO" and the label "ADVANCE". The product marketed by the defendants is deceptively similar to the label and the trade mark of the plaintiff.
The application is at the ad interim stage. At such stage, the defendants bring to the notice of the Court the fact that the plaintiff filed a suit being Title Suit No. 3582 of 2010 against another party and failed to obtain any interim order on April 20, 2012. The plaintiff failed to obtain any interim relief on appeal, from the High Court.
The applicability of the ratio of the authorities cited on behalf of the parties would best be considered after affording the parties an opportunity to file an affidavit. At this stage it would be appropriate to protect the plaintiff by directing the defendants to keep accounts of its dealings with regard to the product until further orders.
Let affidavit-in-opposition be filed within two weeks from date, reply thereto, if any, be filed one weeks thereafter.
List the application under the heading "Adjourned Motion" three weeks hence.
(DEBANGSU BASAK, J.) TO