Indian Kanoon - Search engine for Indian Law

JYOTI SINGH, J.

1. This suit was instituted by Citizen Holdings Co., Ltd. in December, 2015 seeking inter alia a decree of permanent injunction restraining Dineshkumar Laxmanbhai Virda/Defendant and his partners, directors, agents and all others acting on his behalf from manufacturing, marketing, selling, offering for sale machine tools including lathe machines or any type of goods and services bearing the mark CITIZEN or C-TIZEN and/or any other deceptively similar trademark, trade name and domain name which infringes and/or dilutes Plaintiff's well-known registered trademark CITIZEN and/or from passing off Defendant's goods as those of the Plaintiff. Decree of damages to the tune of Rs.1 crore is sought along with cost of the suit. Prayer for delivery up is also made. During the pendency of the present proceedings, on 01.10.2016 name of Plaintiff company changed to Citizen Watch Co., Ltd. and on this basis, Plaintiff filed an application the plaint with respect to the change of name. Along with the application, Plaintiff filed Certificate of Part of Historical Items in the Commercial Register obtained from the Registrar of Companies, Tokyo, Japan, to support the plea. After seeking reply from the Defendant and hearing the parties, vide order dated 27.09.2017, Court allowed the application and permitted the change of name to Citizen Watch Co., Ltd. and allowed the Plaintiff to file amended Memo of Parties and amended plaint, both of which were filed on 09.10.2017.

2.11. Plaintiff's mark CITIZEN is well-known in India at least since the year 1978 not only because of spill over of trans-border reputation but also through direct sales of lathe machines, through exports to several customers. In or around January, 2008, Plaintiff came across an application filed by the Defendant in Class 07 bearing No.1484080 for registration of the trademark CITIZEN, published in Trademark Journal No.1384(1) dated 16.01.2008. Plaintiff opposed the application on the ground that Plaintiff was the registered proprietor of the trademark CITIZEN, in respect of identical goods i.e. lathe machines. In 2010, Plaintiff came across another trademark application filed by the Defendant for identical goods in Class 07 bearing No.1754411 for the mark C-TIZEN. This application was also opposed by the Plaintiff. Defendant had claimed user of the marks for lathe machines since 1994. Both oppositions filed by the Plaintiff are pending before the Trade Marks Registry. Plaintiff's informal search on the internet in 2014 revealed that Defendant was infringing its mark CITIZEN by using deceptively similar and phonetically identical mark CITIZEN for lathe machines. Defendant had launched a website www.citizenlathe.in, in or around October, 2014 as also obtained the domain on 27.11.2015 and started a website http://citizenlathe.com//, representing and advertising himself to be a global leader in machine tools and showcasing his business under the name 'Citizen Lathe'. Shocked and concerned by this act, Plaintiff sent a cease and desist notice dated 09.01.2015 to the Defendant, followed by several reminders, last of which was dated 06.04.2015.

2.12. On 01.05.2015, Defendant filed a false and frivolous suit under Section 142 of the Trade Marks Act, 1999 (hereinafter referred to as '1999 Act') in the Court of Additional District Judge, Rajkot, Gujarat, claiming that Plaintiff had been issuing groundless threats to the Defendant and sought a declaration that the impugned marks of the Defendant are not identical or deceptively similar to Plaintiff's CITIZEN mark and sought injunction.

20. A comparative table of the trademark of the Plaintiff and the Defendant has been extracted in the earlier part of the judgment, which clearly shows that the competing marks are deceptively similar and phonetically identical. The competing goods in question are lathe machines and naturally relate to the same class of consumers. Use of the impugned mark by the Defendant would certainly cause deception and confusion amongst the public, albeit, there being phonetic identity in the rival marks, the Court is not even required to go into an inquiry whether the infringement is likely to deceive or cause confusion as held in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, (2022) 5 SCC 1 and Ruston & Hornsby Ltd. (supra), there being a statutory presumption of confusion when rival marks and goods are identical. PW1 through her deposition shed light on the aspect of registration of Plaintiff's trademark CITIZEN and the deceptive similarity/identity between the rival marks and the competing goods i.e lathe machines, as under: