The Madras High Court recently granted a permanent injunction restraining the Defendants (Sujatha Match Works) from infringing upon the plaintiff’s (Ranga Rao & Sons) well-known, registered trade mark and artistic work “Cycle Brand with the device of Cycle” and /or passing off its goods – “Matches and Match Box” as that of the plaintiff’s trademark.
Background
The plaintiff is involved in the manufacturing and selling of agarbattis/incense sticks/cones/dhoops under the brand/trademark “Cycle Brand” along with a device of cycle in a peculiar colour scheme and has various trademark and copyright registrations in class 03 for the said trademark. Later, the plaintiff started manufacturing match boxes and gave them free of cost with Agarbattis under the said trademark for its Pooja items.
Subsequently, the plaintiff discovered that the defendant has also been using the same trademark, ‘Cycle’, in relation to allied goods – Safety Matches/Match Boxes in class 34. The plaintiff contended that it adopted the mark ‘Cycle’ together with the device of a cycle in 1954, and it was being used openly and continuously. In contrast, the defendant’s subsequent use of the mark ‘Cycle’ for cognate goods, i.e. Safety Matches/Match Boxes, is malafide, dishonest and with the sole intention of usurping the plaintiff’s reputation through dilution and infringement of its trademark, thus violating its statutory and common law rights.
Defendant’s Contentions
- As per the defendant, it had been using the ‘Cycle’ label under the tradename ‘Sujatha Match Works’ in respect of its goods, namely Safety Matches, for the last 27 years, and the same is being marketed by it in a small district of Vellore in Tamil Nadu, Chittoor, Kurnool and other such neighbouring states of Andhra Pradesh and hence its adoption is honest and bonafide.
- The plaintiff might be the early adopter of the trademark for Agarbattis/Dhoop/Incense sticks, but the defendant was the prior adopter of the trademark with respect to Safety Matches in class 34.
- As there is no registration by the plaintiff for the trademark in class 34, no case for Passing off can be made as the defendant is not selling Agarbattis.
- Both goods fall into different classes, with different representations, packaging, costs, sizes, and utility. Hence, there is no possibility of deception and confusion through passing off or infringement.
- Plaintiff cannot seek exclusive monopoly over the word ‘CYCLE’ across all products sold in the country.
- The plaintiff has also not filed any document to show the use or sale of the trademark for Safety Matches, and these couldn’t be considered as cognate goods to Agarbattis/Incense sticks.
- No prima facie case was made out by the plaintiff of any injury or loss of sale for Agarbattis because of the defendant’s sale of Match Boxes in 4 prime districts. Hence, the balance of convenience is in favour of the defendant.
Observations by the Court
The Court observed that the plaintiff has sufficiently proven its reputation in the market under the trademark ‘Cycle brand’ with the device of the cycle and has put in tremendous efforts to market and protect the mark CYCLE. Moreover, no cogent reasoning was provided by the defendant for his sudden adoption of the Cycle brand in 1995 while previously operating under different brands. The reason that he used to travel in a cycle and bought a cycle for his son in 1993 is unsatisfactory and unacceptable. Moreover, the defendant has not successfully established that he is the prior user of the mark CYCLE for his goods.
The Court also relied on the principles of nature & composition, respective use and trade channels in deciding whether the goods of the plaintiff and that of the defendant are goods of the same description. It concluded that the same are allied goods, and the defendant has clearly infringed the plaintiff’s rights by adopting the impugned mark in 1995 for allied and cognate goods, thereby violating Section 29(4) of the Trade Marks Act.
The defendant’s claim that owing to the different nature of goods, confusion or deception in the market is unlikely does not add grist to its contentions as the same was knowingly and deliberately done after using several other brands. The Court placed reliance on Section 29(4) of the Trade Marks Act, 1999, and the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & others [(2022) 5 SCC 1] to conclude that confusion/likelihood of confusion is not essential to constitute infringement. The subsequent and dishonest adoption of the identical mark ‘CYCLE’ with the device of Cycle by Defendant is apparent, and if a reasonable observer is likely to get confused between the products, then there is a violation of the rights of the prior adopter of the mark. Thus, the defendant’s adoption of the identical mark is not only an infringement but also the tort of passing off, even considering the adoption of the impugned mark in 1995.
Conclusion
Thus, the Court decided the suit in favour of the plaintiff and declared that the defendant tried to take an unlawful advantage of the plaintiff’s mark by its use, and any such use would be detrimental to the plaintiff’s reputation. Lastly, the Court opined that the above clubbed with the fact that the plaintiff’s mark CYCLE with the device of “Cycle” has been declared as well known by appropriate authorities and this Court on multiple occasions, the plaintiff is entitled to claim monopoly over the mark CYCLE across all classes of goods and services.
Authors: Manisha Singh and Baani Talwar
First Published by: AsiaIP Here