Case Note & Summary
The Plaintiff, RPG Enterprises Limited, a multi-industry Indian conglomerate, filed a suit against the Defendants, Riju Ghoshal and Poulami Ghoshal, for infringement of its registered trade marks, infringement of copyright, and passing off. The Plaintiff claimed to have adopted the trade mark 'RPG' in 1979, derived from the initials of its founder Shri Rama Prasad Goenka, and had used it extensively across various businesses including tyres, infrastructure, IT, pharmaceuticals, energy, and e-commerce. The Plaintiff had registered the mark 'RPG' in multiple classes. The Defendants were using the trade name 'RPG' in connection with their business of providing services, including a website and social media handles. The Plaintiff alleged that the Defendants' use of 'RPG' was deceptively similar and likely to cause confusion among the public. The Defendants contended that they had honestly adopted the mark 'RPG' as an acronym for 'Riju Ghoshal and Poulami Ghoshal' and had been using it since 2014, and that the Plaintiff had acquiesced to their use. The court framed the issue as whether the Defendants' use of 'RPG' as a leading feature was likely to cause confusion. After hearing extensive arguments and considering written submissions, the court held that the Defendants' mark was deceptively similar to the Plaintiff's registered marks and that the Defendants had adopted the mark with knowledge of the Plaintiff's reputation. The court rejected the defences of honest concurrent use, acquiescence, and delay, finding that the Plaintiff had not acquiesced and had taken timely action. The balance of convenience was in favour of the Plaintiff. The court granted an injunction restraining the Defendants from using the mark 'RPG' or any deceptively similar mark in relation to their services, and directed the Defendants to transfer the domain name and social media handles containing 'RPG' to the Plaintiff.
Headnote
A) Trade Marks - Passing Off - Infringement - Deceptive Similarity - Trade Marks Act, 1999, Sections 29, 134 - The court considered whether the Defendants' use of 'RPG' as a prominent feature in their trade name for services is likely to cause confusion with the Plaintiff's registered RPG marks. Held that the Defendants' mark is deceptively similar and likely to cause confusion, and granted an injunction restraining the Defendants from using 'RPG' in any manner (Paras 4, 78). B) Trade Marks - Honest Concurrent Use - Acquiescence - Trade Marks Act, 1999, Section 33 - The Defendants argued honest concurrent use and acquiescence by the Plaintiff. The court found that the Plaintiff had not acquiesced and that the Defendants' use was not honest as they adopted the mark with knowledge of the Plaintiff's reputation. Held that the defence of honest concurrent use and acquiescence failed (Paras 30-45). C) Trade Marks - Delay and Laches - Balance of Convenience - The court examined the delay in filing the suit and found that the Plaintiff had taken prompt action after becoming aware of the Defendants' use. The balance of convenience was in favour of the Plaintiff as the Defendants had not established any substantial business under the impugned mark. Held that delay did not bar the injunction (Paras 46-55).
Issue of Consideration
Whether the Defendants' use of the trade mark and/or trade name containing 'RPG' as its only leading, essential and prominent feature in respect of their services is likely to cause confusion or deception in the minds of the public so as to mistake or associate the same with the Plaintiff or the services offered by the Plaintiff under its RPG trade marks.
Final Decision
The court allowed the Notice of Motion and granted an injunction restraining the Defendants from using the trade mark 'RPG' or any deceptively similar mark in relation to their services. The Defendants were directed to transfer the domain name and social media handles containing 'RPG' to the Plaintiff.
Law Points
- Passing off
- Trade mark infringement
- Deceptive similarity
- Likelihood of confusion
- Honest concurrent use
- Acquiescence
- Delay
- Balance of convenience
