Case Note & Summary
The appellants, M/s. Mobile Bidi Traders, a partnership firm, are bidi manufacturers and proprietors of the trade mark 'Online' registered under the Trade Marks Act, 1999. They have been manufacturing bidi since 2005 and applied for registration of the trade mark 'Online Bidi' on 31.08.2017, which was registered on 04.01.2020 after statutory enquiry. The respondent, Amin Rehman Suleman, is also a bidi manufacturer who started using the trade mark 'Ontime' on its wrapper with an identical colour scheme. On 09.06.2021, the appellants filed Trade Mark Suit No.5/2021 before the District Judge, Nagpur, along with an application under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908, seeking a temporary injunction restraining the respondent from using and selling bidi under the name 'Ontime Bidi'. The respondent denied the contentions, arguing that the marks are not identical and that he had made changes to his packaging to avoid legal battle. The Trial Court rejected the application for temporary injunction, holding that the products are not visually, phonetically, or structurally similar. The appellants appealed against this order. The High Court allowed the appeal, setting aside the Trial Court's order and granting the temporary injunction. The court found that the marks 'Online' and 'Ontime' are phonetically and visually similar, and the registration of the trade mark gives a prima facie right to the appellants. The court held that the appellants have made out a prima facie case, balance of convenience is in their favour, and they would suffer irreparable loss if the injunction is not granted. The respondent is restrained from using the mark 'Ontime Bidi' or any other deceptively similar mark pending disposal of the suit.
Headnote
A) Trade Marks - Temporary Injunction - Phonetic and Visual Similarity - Order 39 Rule 1 and 2 CPC, Section 28 Trade Marks Act, 1999 - The court considered whether the mark 'Ontime' is deceptively similar to 'Online' and held that there is phonetic and visual similarity, and the registration of the trade mark gives a prima facie right to the appellants. The trial court erred in comparing the marks as a whole without considering the dominant part. (Paras 8-10) B) Trade Marks - Prima Facie Case - Balance of Convenience - Irreparable Loss - The court held that the appellants have made out a prima facie case, balance of convenience is in their favour, and they would suffer irreparable loss if injunction is not granted. The respondent's use of a similar mark is likely to cause confusion. (Paras 11-12)
Issue of Consideration
Whether the appellants are entitled to a temporary injunction restraining the respondent from using the mark 'Ontime Bidi' on the ground that it is deceptively similar to the appellants' registered trade mark 'Online Bidi'.
Final Decision
The appeal is allowed. The impugned order dated 29.08.2022 passed by the District Judge-7, Nagpur is set aside. The application below Exh.5 in Trade Mark Suit No.5/2021 is allowed. The respondent, his agents, servants, and relatives are restrained from using and selling the bidi in the name of 'Ontime Bidi' or any other deceptively similar mark pending disposal of the suit.
Law Points
- Temporary injunction
- Trade mark infringement
- Phonetic similarity
- Visual similarity
- Prima facie case
- Balance of convenience
- Irreparable loss
- Order 39 Rule 1 and 2 CPC
- Section 28 Trade Marks Act
- 1999
