Madras High Court
This Application Has Been Filed Seeking ... vs Ashok Leyland Limited And Another) In ... on 10 July, 2012
Author: V.Periya Karuppiah
Bench: V.Periya Karuppiah
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 10/07/2012 CORAM THE HON'BLE MR. JUSTICE V.PERIYA KARUPPIAH O.A.Nos.446 and 447 of 2011 in C.S.No.345 of 2011 ORDER
O.A.No.446 of 2011 This application has been filed seeking an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other persons claiming through or under them, from in any manner using or otherwise dealing with the trade mark / trade name / domain name 'O2' or any other mark which is identical / similar to the applicant's registered trademark amounting to infringement of the trademark 'O2' registered under No.1574694 in classes 5, 28 and 42 or in any other manner whatsoever pending disposal of the suit.
2. O.A.No.447 of 2011 This application has been filed seeking an order of ad-interim, interim, temporary injunction restraining the respondent, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other persons claiming through or under them, from using the mark 'O2' or any other mark similar thereto in respect of their trade, business as part of their trade name / business name / corporate name / domain name, in websites, service mark, spas, health clubs or in any other manner to pass off and / or enabling others to pass off as and for applicant's trade and business under the trademark 'O2' or in any other manner whatsoever, pending disposal of the suit.
3. Heard Mr.A.A.Mohan and Mr.Arun C.Mohan, learned counsel for the applicant and Mr.Anand Sashidharan, learned counsel for the respondent.
4. The learned counsel for the applicant would submit in his argument that the plaintiff has filed the suit for the reliefs of injunction restraining the respondent from infringing and passing off by use of identical mark 'O2' as trade mark, to which the plaintiff has obtained registration from Trademark Registering Authorities. He would further submit that the applicant / plaintiff in the course of its business has adopted unique and distinct trademark 'O2' and was in vogue since the year 2001 and he had applied and obtained registration under No.1574694 in classes-5, 28 and 42 in respect of health food in containers, health food supplements, nutritional supplements, dietary supplements, meal replacement preparations, fitness equipments and apparatus and services relating to providing of food and drink, restaurant / hotel, coffee shop, snack bars, canteens etc., He would also submit that the said registration of trademark is duly renewed and it is subsisting. He would further submit that he had also applied for the registration of the mark 'O2 Health Studio' under No.1268043 in class-45 in respect of providing gymnastics, entertainment, sports camps services, education, sporting and cultural activities and the said registration is pending. He would also submit that the registration certificate issued by the Trademark Registering Authority has been produced and the plaintiff has used the trademark 'O2' in a stall situated in hotel Savera, one of the properties of the applicant.
5. The learned counsel for the applicant / plaintiff would also submit that the defendant has used the trademark 'O2 Spa' with the same services as seen from pages 104 and 113 of the typed set, the feedback of the defendant. He would further submit that since the applicant was using the trademark 'O2' from the year 2001 and had the registration of the trademark 'O2' as per the registration certificate, he is entitled to be protected under Section 29(1)(2) and (4) of the Trademarks Act. He would further submit that the applicant / plaintiff is the prior user and even though the trademark 'O2' is a chemical name for oxygen, it was registered and registered proprietor of the trademark ought to have been protected from any infringement of the trademark by the defendant. He would cite a judgment of this Court reported in 2011 (4) CTC 417 (Blue Hill Logistics Private Ltd., ..vs.. Ashok Leyland Limited and another) in support of his argument. He would further cite a judgment of the Delhi High Court reported in 2010 (42) PTC 469 (Ozone Spa Pvt. Ltd., ..vs.. Ozone Club) in support of his argument. He would further submit that the said registered mark 'O2' is distinctive and its user dates back to 2001 and it has been advertised in commercial complexes and roads, whereas the defendant is infringing the trademark by using the same in his name in the Airports. He would also submit that the use of 'O2 Health Studio' was commenced in the year 2006 and that could be seen from the Income Tax Returns submitted from 2006 to 2011 and also from various agreements entered into between the parties even prior to 2006 with Rebok India Company and other advertisement bills paid by the plaintiff for 'O2 Health Studio'. He would also submit in his argument that the plaintiff had expended much for its advertisement and its sales promotional figures have been shown in the affidavit which would show increasing year by year. Apart from using the trademark, the plaintiff had also actively promoting its services in the internet through its website "www.o2healthstudio.com". The defendant had also opened with a website in the name of "www.o2spa.org" and the website address also infringed the trademark name by using the mark 'O2'. He would also submit that the respondent's use of identical service mark / trademark 'O2' for identical business amounts to infringement of the applicant's exclusive rights vested in them by virtue of its adoption, registration of trademark and the exclusive and continuous use since 2001.
6. The learned counsel for the applicant / plaintiff would also submit that the applicant had caused cease and desist notice on 24.09.2009 calling upon the respondent to cease and desist from infringing the registered trademark 'O2', but there was no response. He would also submit that the subsequent notice dated 18.12.2009 reiterating the respondent to desist from infringing the mark 'O2', but the respondent had replied on 09.01.2000 denying all the contentions. However, the respondent has started 'O2 Health Club / Spa" in the departure lounge in Kamaraj Domestic Airport, Chennai and started identical business in the city of Chennai. He would further submit that the respondent / defendant owing to the widespread publicity of the applicant's mark and the adoption and the usage of the mark 'O2' which would be amounting to misrepresentation and deception amongst the members of the public. He would also submit that the members of the public are inevitably confused by the act of the respondent and it would not only to cheat the members of the public, but would also prejudice the applicant. He would further submit that the respondent is passing off and enabling others to pass off services, business and goods of the applicant by the usage of identical mark 'O2'. He would further submit that the plaintiff had established a prima facie case by producing the registration certificate and also a document to show that he was the user of 'O2 Health Studio' even prior to 2006 and the 'O2' mark from 2001 onwards. He would further submit that if the respondent is permitted to use the trademark of the applicant 'O2' and to conduct a similar service like that of the applicant / plaintiff, it would not only stealing the reputation and good will of the applicant, but would also amount to infringement of trademark service mark 'O2', to which, the applicant is the registered proprietor. He would also submit that if such a passing off has been permitted without the grant of any injunction, the damages likely to cause to the applicant would be immeasurable and irreparable. If in the event of injunction being granted, the respondent will not be barred from doing services, but would be barred from using the trademark 'O2' and therefore, there would not be any prejudice caused to the respondent. Therefore, he would submit that the balance of convenience is also in favour of the applicant / plaintiff. The learned counsel for the applicant / plaintiff would also insist in his argument that even though the mark 'O2 Health Studio' has been applied for registration and it is yet to be registered, the passing off action can be restrained, since he is the prior user of the trade mark 'O2' and the defendant prima facie did not establish that before the use of trademark 'O2 Spa', he had verified about the prior use of the said trade mark and thereafter he adopted to use the same. He would also submit that the provisions of Section 27(2) would squarely apply coupled with Section 135 of the Act. He would also submit that the plaintiff is entitled for interim injunction in respect of passing off action against the defendant. He would also bring it to the notice of this Court a judgment of the Delhi High Court reported in AIR 1978 Delhi 250 (Century Traders ..vs.. Roshan Lal Duggar & Co.,) in support of his argument.
7. In support of his arguments, the learned counsel for the applicant / plaintiff would cite a catena of judgments reported in
(i) 2009 (41) PTC 374 (Glenmark Pharmaceuticals Ltd., ..vs.. Bal Pharma Ltd., & another);
(ii) 2005 (30) PTC 233 (SC) (Dhariwal Industries Ltd., and another ..vs.. MSS Food Products);
(iii) 2008 (17) SCC 491 (Bachhaj Nahar ..vs.. Nilima Mandal and Another);
(iv) 2004 (3) SCC 90 (Midas Hygiene Industries ..vs.. Sudhir Bhatia and Others);
(v) 2002 (3) SCC 65 (Lakshmikant V Patel ..vs.. Chetanbhai Shah and another);
(vi) 2007 (35) PTC 474 (Health and Glow Retailing Pvt. Ltd., ..vs.. Dhiren Kishen Paul); and the judgments of this Court reported in
(vii) 2007 (4) MLJ 1022 (B.Kishore Jain ..vs.. Navaraatna Khazana Jewellers);
(vii) 2011 (4) LW 55 (M/s.Aravind Laboratories ..vs.. Modicare);
(viii) 1996 MLJ 580 (Fathima Tiles ..vs.. Sudharsan Trading Co.,); and
(ix) an unreported judgment dated 05.05.2011 made in OSA.Nos.7 and 8 of 2011 (Blue Hill Logistics Private Ltd., ..vs.. Ashok Leyland Limited and another).
8. Stressing on the unreported judgment of this Court, the learned counsel for the applicant / plaintiff would submit in his argument that even the registered trademark 'O2' was restricted to fitness equipments and apparatus, the end service provided by the respondent / defendant by infringing the trademark 'O2 Spa' at the lounge in Kamaraj Domestic Airport, which is also with the use of such apparatus, is involved in the training programmes and the health was primarily promoted in order to reduce the medical expenditure and therefore, the provisions of Section 29(4) would also apply as per the principles laid down in the judgment. Therefore, he would request the Court to pass an order of interim injunction as sought for in both the applications.
9. The learned counsel for the respondent / defendant would submit in his argument that the registration certificate produced by the applicant / plaintiff was issued under Form-O2 in which it has been mentioned that it should not be used in any legal proceedings and the conclusive proof is not produced by the applicant and therefore, the registration of the trademark cannot be presumed in favour of the applicant. He would also submit that the applicant cannot invoke the provisions of Section 29(1)(2) and (4) cumulatively, since the provisions of Section 29(1)(2) are different and 29(4) is different. He would also submit that the services rendered by the defendant was towards health by doing Spa and Salons. He would therefore submit that the 'massage' or salon have not been mentioned in class-42 wherein, the trademark had been registered. He would also submit that the application made by the plaintiff seeking to register 'O2 Health Studio' under class-41 would not also show that the services of the defendant since they are either identical or similar and therefore, the provisions of Section 29(1) or 29(2) of the Act will not be attracted. He would further submit that the registration of 'O2 Health Studio' is yet to be done and therefore, there could not be any proprietorship for the applicant in respect of the 'health studio' or towards the services mentioned under class-41. He would further submit in his argument that the plaintiff did not even plead the ingredients of the infringement under Section 29(4) of the Act nor anything has been shown towards the attraction of Section 29(4) of the Act. He would also submit that the applicant can either choose to argue on the infringement under Section 29(1) and 29(2) of the Act or under Section 29(4) of the Act. He would also submit that there would not be any application of Section 29(4) of the Act, because the case of the applicant would be restricting that he is having his reputation in Chennai only. He would also submit that for attracting the provisions of Section 29(4)(c) of the Act, the reputation should have been throughout India and therefore, there would not be any application of the said Section as argued by the plaintiff. He would also submit that the plaintiff did not say that he has effected advertisements all over India in order to presume reputation throughout India. He would further submit that there are so many registration of trademarks under 'O2' to various persons for various goods and therefore, there cannot be any infringement of service on the registration of the trademark as 'O2' for the goods. He would further submit that the application made by the plaintiff for registration of 'O2 Health Studio' was objected to by some other third person and the said application is still pending and no registration had granted.
10. The learned counsel for the respondent would also submit that the respondent had used the word 'O2 Spa' after making due cause and it cannot be said that the respondent / defendant had used the said mark without any cause. He would further submit in his argument that the services rendered by the applicant is different from that of the services provided by the defendant and the defendant had dealt with the services of Spa and Salons, whereas the applicant did not do the said service and his service is restricted to Chennai with limited exposure to public and therefore, there may not be any injunction to be passed against the defendant. He would also submit that the public would not be misguided even to avail the services of the respondent thinking that the services are provided by the applicant. There would not be any passing off since the respondent / defendant had its own reputation throughout India. He would further submit that if for any reason injunction is granted, the respondent / defendant's services and business would be crippled for no violation of trademark.
11. The learned counsel for the respondent would also submit that the mark 'O2' is a generic term, which would mean the chemical name of oxygen and therefore, it is a common word as per the judgment of the Delhi High Court. He would also draw the attention of the Court to a judgment of Delhi High Court reported in 2003 (26) PTC 428 (K.M.Associates Pvt. Ltd., ..vs.. Good Times Pvt. Ltd.,) for the principle that the word 'oxygen' is a generic term and prima facie case cannot be made when the use was contemporaneous. He would also bring it to the notice of this Court, the judgments of the Delhi High Court reported in 131 (2006) DLT 458 (Biswaroop Roy Choudhary ..vs.. Karan Johar) and 155 (2008) DLT 56 (Warner Bros. Entertainment Inc. and Another ..vs.. Harinder Kohli and Others) for the principle that the delay in seeking for injunction will disentitle the plaintiff towards the grant of injunction. Quoting the aforesaid judgment, it has been argued that the plaintiff did not approach the Court in time even though, he is stated to have used the word from the year 2001 and therefore, the said judgments would apply to the present case.
12. The learned counsel for the respondent would also cite a judgment of this Court cited in OSA.Nos.7 and 8 of 2001 in its reported form in 2011 (4) CTC 417 (Blue Hill Logistics Private Ltd., ..vs.. Ashok Leyland Limited and another) and would insist that the provisions of Section 29(4) would not apply to the present case as found in the said judgment. He would also submit that the facts of the present case is different from the facts of the said judgment and therefore, the principles laid down in the said judgment is not applicable. Therefore, he would submit that the balance of convenience is only in favour of refusing to grant injunction against the respondent. He would, therefore, request the Court to dismiss the applications accordingly.
13. I have given anxious thoughts to the arguments advanced on either side.
14. The plaintiff has filed the suit against the defendant for the following reliefs:-
a) A permanent injunction restraining the defendant, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from in any manner using or otherwise dealing with the trademark/trade name/domain name 'O2' or any other mark which is identical/similar to the plaintiff's registered trade mark amounting to infringement of the trade mark 'O2' registered under No.1574694 in classes 5, 28 and 42 or in any other manner whatsoever;
b) A permanent injunction restraining the defendant, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from using the mark 'O2' or any mark similar thereto in respect of their trade, business as part of their trade name/ business name / corporate name / domain name, in websites, service mark, spas, health clubs or in any other manner to pass off and/or enabling others to pass off as and for plaintiff's trade and business under the trademark 'O2' or in any other manner whatsoever;
c) The defendant be ordered to pay to the plaintiff, a sum of Rs.1,00,000/- as damages for committing infringement of trademarks and passing off its products as and for the plaintiff's products or services;
d) The defendant be ordered to surrender to the plaintiff for destruction, name boards, invoices / bills, prints, dies, blocks, moulds and plates, screen prints, cylinders, packing and advertising material, floppy discs, CDs, DVDs, hard drives and any other material in the defendant's possession, which bears the trademark 'O2' ;
e) a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the deceptively similar trademark / trade name 'O2' amounting to infringement of the plaintiff's registered trademark and / or passing off and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts;
f) for costs of the suit; and
g) for such further and other reliefs as this Hon'ble Court may deem fit and proper in the circumstances of the case and thus, render justice."
15. In these applications, the plaintiff has sought for temporary injunction against the respondent towards the infringement of the registered trademark 'O2' by using the trademark name 'O2 Spa' by the respondent for his services and also to restrain the respondent from passing off by using the applicant's trademark name 'O2' or any other trademark name prefixing or suffixing 'O2'.
16. I could see that the plaintiff is doing various businesses through its sister concerns, group of companies and firms as told in the plaint. The trademark name 'O2' was registered in the name of the plaintiff on 28.03.2009 in the application dated 02.07.2007. Even though the production of Form-O2 has been objected to by the respondent, the factum of registration of trademark 'O2' under classes 5, 28 and 42 towards goods and services was not disputed. As per the Trademarks Act, the services and goods were classified in the schedules appended to the said Act. Goods are listed or enumerated in s 1 to 34 and a separate heading 'services' follow s 35 to 42. Therefore, it is seen that the services relating to providing food, drink, restaurant / hotel, coffee shop as detailed in the certificate of registration has been registered under the trademark name 'O2' in favour of the plaintiff. It is also the case of the plaintiff that it had applied for the registration of the trademark 'O2 Health Studio' towards services under class-41 of the schedule and it is pending. It is also not disputed by the respondent that some third parties have objected to the registration of 'O2 Health Studio' on the application of the plaintiff and it is still pending. According to the documents produced by the plaintiff that it had adopted the use of 'O2' trademark in its business, not later than 2004, the Income Tax Returns submitted by the plaintiff as well as various payment receipts and invoices would show that the use of 'O2 Health Studio' was also from 2006 onwards.
17. According to the submission of the learned counsel for the applicant, the services rendered by the plaintiff has also been provided by the defendant by the use of trademark 'O2' through the advertisement given in the website that 'O2 Spa' was providing massage, hair care, hair styling, hair treatment and hair colouring and are also providing spa therapies with the internationally qualified members of the Spa Team trained from Thailand. However, the respondent has also disclosed that it is giving Spa and Salon services at its centres only. According to the learned counsel for the respondent, the services rendered are not connected with the goods and services registered under the trademark name 'O2' in classes 5, 28 and 42. Therefore, it was argued that Section 29(1) and 29(2) or Section 29(4) of the Act would not come to the rescue of the plaintiff to grant any injunction against the defendant.
18. As far as the application of Section 29(1) and (2) are concerned, the case of the plaintiff was not that the defendant is selling the goods in the name of 'O2 Spa' as registered under classes 5 and 28. It is no doubt true that the plaintiff had registered the trademark 'O2' in classes-5, 28 and 42. classes 5 and 28 are related to goods namely health food in containers, health food supplements, nutritional supplements, dietary supplements, meal replacement preparations under class -5 and fitness equipments and apparatus under class 28. Services under class-42 is providing food and drink, restaurant / hotel, coffee shop, snack bars, canteens, outlets for providing food and drink, boarding and lodging and catering. No doubt, in class-42 nothing was stated regarding the health training or massages or the services rendered by the respondent in its Centre. Therefore, the provisions of Section 29(1) and (2) will not apply.
19. Whether the provisions of Section 29(4) could be applied is the question to be decided with the support of the precedents. The judgment of this Court reported in 2011 (4) CTC 417 cited supra in OSA.Nos.7 and 8 of 2011 dated 05.05.2011 is the case similarly placed so as to follow the principles made therein. In the said judgment, it has been categorically mentioned in paragraph Nos.19 to 22 as follows:-
"19. We fully concur with the findings of the single Judge of Bombay High Court that use of the trade mark in relation to goods is distinct from the use of the trade mark in relation to services. It is to be noted that Fourth Schedule contains number of Classes. Classes 1 to 34 refer to "Goods" and "Services" are included in Classes 35 to 42. As pointed out earlier, Plaintiff has obtained the registration of the trade mark LUXURA under class 12-Goods. Whereas 1st Defendant has applied for registration of trade mark in respect of Classes 39 and 35 "Services", Plaintiff has to show that 1st Defendant's "Services" are similar to "Goods" by the Plaintiff.
20. The scheme and provisions of the Act clearly disclose the dichotomy between "Goods" on the one hand and "Services" on the other. Section 2(i)(j) defines "Goods" in an identical terms to the 1958 Act i.e. as meaning anything which is the subject of trade or manufacture. However, Section 2(1)(z) added a definition of the term "Services" as follows: Section 2(1)(z) - "Services" means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.
21. The distinction between "Goods"and "Services" is made clear by the provisions of the 2002 Rules. Under Rule 22(1) of the 2002 Rules, "Goods" and "Services" are to be classified in the manner specified in the Fourth Schedule. The Fourth Schedule contains various classes of 'GOODS' - Classes 1 to 34. Thereafter, under a separate heading 'Services' follow Classes 35 to 42. Classes 35 to 42 are exclusively services making it clear that Classes 1 to 34 are exclusively goods. Class 42 includes Providing of food and drink which would mean food items listed in Class 29 to 34 do not include any services in respect of food items and drinks. Class 42 also contains a residuary class i.e. "Services that cannot be classified in other classes. This residuary class applies only to services and does not extend to goods. This also shows that "Goods" and "Services" are treated separately.
22. The significant guide is found in Section 2(3) of the Act which reads as follows:-
Section 2(3) - For the purposes of this Act, "Goods" and "Services" are associated with each other if it is likely that those "Goods" might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services. Association of Trade Marks are defined under Section 2(1)(c):
2(1)(c) Associated trade marks means trade marks deemed to be or required to be registered as associated trade marks under this Act."
20. On the basis of the aforesaid principle, it has been urged that the registered proprietor, who is invoking the provisions of Section 29(4) of the Act, should have shown the nexus between the goods and services as detailed in Section 2(3) of the Act. Whenever the registered proprietor of the trademarks of goods is complaining an infringement of the said trademark, the nexus between the goods and services carried on the same or similar trademark should have established in accordance with Section 2(3) of the Act. No doubt, the goods registered under classes 5 and 28 are not connected with the services rendered by the respondent in Spa and Salon or for conducting the health club as detailed in the advertisement. Those goods are not predominantly used in the services of Spa and Salon. Therefore, the registration of the trademark 'O2' as in classes 5 and 28 cannot be invoked for granting protection under Section 29(4) of the Act, in the light of the aforesaid judgment.
21. The case of the plaintiff is that the services rendered by the plaintiff's concern through its 'O2 Health Studio' is being adopted by the defendant under the name and style of 'O2 Spa'. Even the services as described in the advertisement made on behalf of 'O2 Health Studio' as found in pages 100 to 109 are similar to that of the advertisement given by the defendant produced in pages 110 to 113. According to the defendant, he is doing Spa and Salon services at his Centre. Therefore, I could see that both the services are similar. The adoption of the mark 'O2 Spa' is identical except the addition of the word Salon.
22. Now considering the applicability of Section 29(4) of the Act, we have already found that the services rendered by the plaintiff as well as the defendant are similar and identical. In the said circumstances, whether the pending registration of 'O2 Health Studio' before the registering authority would be sufficient to grant interim injunction is the question.
23. It is the argument of the learned counsel for the applicant/plaintiff that even though the mark 'O2 Health Studio' has been applied for registration and it is yet to be registered, the passing off action can be injuncted, since the plaintiff is the prior user of the trade mark 'O2' and the defendant did not adopt the use of trademark 'O2 Spa' and he ought to have verified about the prior use of the said trade mark and he would not have adopted to use the same. Quoting the judgment of the Delhi High Court reported in AIR 1978 Delhi 250 (Century Traders ..vs.. Roshan Lal Duggar & Co.,), it was argued by the learned counsel for the applicant that the provisions of Section 27(2) would squarely apply coupled with Section 135 of the Act and the plaintiff is entitled for interim injunction in respect of passing of action against the defendant. The relevant passage would run as follows:-
"12. In the Consolidated Foods Corporation v. Brandon and Co. Private Ltd., AIR 1965 Bom 35, it was observed that:
" A trader acquires a right of property, in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the Statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trademark is superior to priority in registration.
.......
14. Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. ...."
The aforesaid dictum laid down by the Delhi High Court was based on Sections 27 and 106 of the old Act, namely, The Trade and Merchandise Marks Act, 1958. Those Sections are now equivalent to Sections 27 and 135 of the Trade Marks Act,1999. It is clear that the search reports were obtained by the defendant only after the filing of the suit. It was not shown to the Court that such search reports were obtained in an earlier point of time before the use of the mark 'O2 Spa' in the year 2010 and therefore, the provisions of Section 135 of the Act would apply in favour of the applicant. Coupled with the provisions of Section 27(2) and Section 135(3)(c) of the Act, I could see that the applicant / plaintiff has shown a prima facie case for curbing the passing off action.
24. Furthermore, according to Section 27 of the Trade Marks Act,1999, the prevention and recovery of damages regarding the infringement of an unregistered trade mark is not possible. However, the right of action against passing off goods or services is exempted from the purview of the said provisions and the common law right is applicable. For better appreciation, Section 27 of the Trademarks Act,1999 is extracted hereunder:-
"27. No action for infringement of unregistered trade mark :-
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
Objects and Reasons Clause 27 This clause provides that no infringement action will lie in respect of an unregistered trade mark, but recognises the common law rights of the trade mark owner to take action against any person for passing off goods as the goods of another person or as services provided by any another person or the remedies thereof. The clause thus retains the existing provision of Section 27 in this respect, with the addition of services.
25. In view of the discussions held above, I am of the view that the injunction sought for by the plaintiff from infringement of the trademark held by him for the goods and services in classes 5, 28 and 42 are not available to the plaintiff. There would be no prima facie case in respect of the infringement of the trademark of the plaintiff. However, the passing off services in the name of 'O2 Spa' can be prevented under common law right since the plaintiff was prima facie found to be a prior user of 'O2 Health Studio' as per the documents produced in the typed set. Therefore, I could see that the passing off relief as sought for by the plaintiff towards interim injunction can be sustained. No doubt, it is true that the plaintiff was the prior user of the trademark 'O2' as well as the mark 'O2 Health Studio' and it is pending registration. In the said circumstances, the defendant being the subsequent user cannot do the services and if it is done, it is amounting to passing off the services similar to that of the plaintiff and therefore, the interim injunction regarding passing off can be granted in favour of the plaintiff. In case of non-granting of injunction, certainly the plaintiff will be put in irreparable loss since the damages likely to have caused through passing off would be immeasurable.
26. According to the defendant, the plaintiff has come to Court very late and the delay in asking for injunction would disentitle from doing so. The judgments of the Delhi High Court cited by the learned counsel for the respondent reported in 131 (2006) DLT 458 (Biswaroop Roy Choudhary ..vs.. Karan Johar) and 155 (2008) DLT 56 (Warner Bros. Entertainment Inc. and Another ..vs.. Harinder Kohli and Others). The principle laid down in 155 (2008) DLT 56 cited supra would be as follows:-
"35.. In Biswaroop Roy Choudhary vs. Karan Johar reported in 131 (2006) DLT 458, a learned Single Judge of this Court, while holding that he was unable to find any plausible reason for not allowing the release of a film, the title of which allegedly was infringing the plaintiffs trademark rights, pertinently held as follows:-
1."12. Delay in approaching the Court, so far as grant of equitable relief is concerned, is always fatal. If the Plaintiff is a serious producer of film, he ought not to have ignored gossip within his trade, whether it was in the form of press reports or exchange of communication to the Guild or Association claiming the same title. At this present moment, I am unable to find any plausible reason for not filing the present case at least upon the Defendants performing its Mahoorat. The plaintiff has waited for the Defendants to expend large sums of money and energy in the completion of the film with the same title, thereby shifting the balance of convenience in favour of the Defendant ......................................................"
In the said judgment, it has been clearly pointed out that approaching the Court very delayedly in the case of injunction regarding Intellectual Properties would be fatal for the grant of relief of injunction.
27. As regards the delay in this case, we could see that the plaintiff had issued cease and desist notice on two occasions by stating that on the earlier desist notice, the defendant had complied with the said notice and kept quite and therefore, he did not approach the Court. However, it has been averred that on the subsequent infringement of the trademark 'O2', another desist notice has been issued and thereafter, he has come to Court. Therefore, it is quite clear that the applicant has approached the Court immediately after the desist notice was issued to the defendant in an earlier occasion. Therefore, the submission of the learned counsel for the respondent cannot be a ground to refuse the grant of injunction. Therefore, I am of the considered view that the applicant / plaintiff is entitled for interim injunction in respect of passing off alone.
28. For the foregoing discussions, I am of the considered view that the relief of infringement sought for by the applicant / plaintiff in the application in O.A.No.446 of 2011 cannot be granted and therefore, it is liable to be dismissed. However, under common law, the plaintiff is found entitled to the injunction regarding passing off as sought for by him in O.A.No.447 of 2011 and accordingly, O.A.No.447 of 2011 is ordered. No costs.
Mra