IN THE HIGH COURT OF DELHI AT NEW DELHI
I.A. No.15425/2008, 217/2009 & 2769/2009 in CS(OS) No.2607/2008
|Clinique Laboratories LLC & Anr.||Appellant|
|Gufic Limited and Another||Respondent|
|Hon’ble Mr. Justice Rajiv Sahai Endlaw||Bench|
|9th April 2009||Date of judgement|
Clinique Laboraties LLC & Anr. V. Gufic Limited and another [I.A. No. 15425/2008, I.A. No. 217/2009 and I.A. No. 2769/2009 in CS (OS) No. 2607/2008] is the 2009 judgement of Delhi High Court. This judgement provides the right to the proprietors of the registered trademark. Trademark is the type of intellectual property right which provides distinct identity to the product for recognition. Trademark has been defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.They are called as service-marks.
Registered trademark means to get your design registered under trademark act. The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules thereunder. It provides the protection of products and to avoid fraudulent use of the mark. A registered proprietor of trademark means the person for the time being entered in the register as proprietor of the trademark.
According to the Trade Mark Act infringement of the trademark is not allowed. If the registration has been done then it gives the legal right or action over the trademark but it cannot be infringed. According to section 134(2) of the Act, the proprietor of the trademark can file a trademark infringement suit in a court of competent jurisdiction, at his place of residence or business.
Facts of the case
In Clinique Laboraties LLC & Anr. V. Gufic Limited and another case plaintiff was the propertior who got registered trademark CLINIQUE’, whereas the defendant was the registered proprietor of the trademark ‘CLINIQ’. The plaintiff filed a rectification application to the Registrar of Trademarks so as to cancel the trademark of the defendant. Subsequently, the plaintiff filed for an injunction to restrain the defendants from passing off their goods because the goods of the plaintiff. The plaintiff contented that their goods were superior and costlier than that of the defendant and even cited advertisements of their product in leading magazines. The contentions of the defendants regarding the incapability of an individual to sue the proprietor of a registered trademark, and therefore the sizable amount of individuals who use the word ‘clinique’, didn’t impress the court. The court observed that a suit for trademark infringement is maintainable albeit the defendant is additionally the proprietor of a registered trademark. Therefore, the court granted an interim injunction in favour of the plaintiff until the rectification application was disposed of by the Registrar of Trademarks.
- Whether both the trademarks are identical and this has to be addressed from the point of view of the average intelligence individual?
- Whether after breaking the components two products are conveying the same meaning or idea?
Section 29 of the Trademark Act, 1999 refers to infringement of the trademark is use of the mark, identity fraudulently by the person who is not the registered proprietor or unauthorised person. In order to prove the infringement, it is important to prove that the infringing trademark is conveying the same meaning and idea.
In this case the questions and arguments raised by both the appellants and defendants were on the similarity of the product. In order to make the infringement it is necessary to show that it is identical or similar to the appellant and defendant and its use will take away the trademark.
Section 28 (3) of the Trademark Act, 1999
“Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”
Section 124(1) of the Trademark Act, 1999
“ Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.”
Section 30(2)(e) of The Trade Marks Act, 1999
(e) “the use of a registered trade mark, being one of two or more trademarks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.”
Ruston & Hornsby Ltd v. The Zamindara Engineering Co;
In this case trademark of Ruston was compared with RUSTON on the one hand and “RUSTAM and RUSTAM INDIA, use of the word RUSTAM INDIA was no infringement because the engines were manufactured in England and the engines of respondent got manufactured in India. It was held by the Supreme Court that there was word RUSTAM was deceptively almost like the word RUSTON which the very fact that the word INDIA was added to the respondent’s trademark was of no consequence and therefore the appellant was entitled to achieve its action for infringement of the trademark.
The Coca Cola Co. v. Bisleri International Pvt. Ltd.
Bisleri, which originally owned the trademark of mango drink MAAZA, sold it to Coca Cola in India. Bisleri later applied for registration of MAAZA trademark in Turkey and began to export the mango drink with the trademark of MAAZA. Coca Cola approached the Indian courts posing for an injunction along side damages against Bisleri for infringement of its trademark MAAZA also on restrain Bisleri from divulging the formulation of the drink. Coca Cola succeeded in obtaining a short-lived injunction against Bisleri for infringement of the trademark.
Cadbury India Limited and Ors. v. Neeraj Food Products
In this case the plaintiff was the renowned producer and manufacturer of chocolates and the confections, the trademark was registered as ‘GEMS’ under his name. The Plaintiff reached the court for an injunction against the Defendant who was purportedly selling a product under the mark ‘JAMES BOND’ which look like the ‘GEMS’ product of the Plaintiff in packaging and size. The Plaintiff claimed that the merchandise sold with mark of ‘JAMES BOND’ was deceptively almost like ‘GEMS’. The court held that the products of the Defendant were certainly dishonestly almost like that of the Plaintiff and granted an injunction preventive the defendant from selling the said product.
The plea made by the plaintiff has been invalidated regards to the other marks of the defendant. The proceedings within the suit are adjourned under Section 124 (1) pending the ultimate disposal of rectification proceedings already instituted and to enable the plaintiff to use for rectification of register regarding the opposite marks. The parties shall have liberty to use for renewal of suit as and when need arises. I.A.No.15425/2008 of plaintiff under Order 39 Rule 1&2 is allowed. Section 28(3), 29, 30 (2) cannot be read in isolation as all of them have to read together. The suit of infringement for registration of trade mark by the owner or proprietor is maintainable can be done against the other trade mark owner or proprietor.
Each proprietor comes with unique and idea for the brand name. While registration of their trademark they must be aware of the rules and regulation while registration for trademark. With the expansion of the company and competition among themselves also increase, hence they have to be cautious for the protection of their goodwill.
- www. indiankanoon.org
- What does the Trademark Act say?
- What was the judgement of the case?
- What are the relevant cases which are similar to this case?
- Does similar idea and concept infringement of the trademark?
 Section 2(1)(zb), Trademarks Act, 1999.
 Official website of Intellectual Property India, Official website of Intellectual Property India, http://ipindia.nic.in/trade-marks.htm (last visited Jun 9, 2020).
 Section 2 (1)(v) of the Trade Marks Act 1999
 STA Law Firm, Trademark Infringements In India – Intellectual Property – India Articles on All Regions including Law, Accountancy, Management Consultancy Issues (2016), https://www.mondaq.com/india/trademark/520202/trademark-infringements-in-india
 1969 (2) SCC 727;
 [142 (2007) DLT 724]