Case Note & Summary
The plaintiffs, Mohtimbas Engineering Pvt. Ltd. (Plaintiff No.1, an Indian stockist and distributor) and a Taiwanese manufacturer (Plaintiff No.2), filed a Commercial IP Suit alleging infringement of their registered trademark KYK and passing off by the defendants, Machine N Tools and four others. The plaintiffs claimed that Plaintiff No.1 was the registered proprietor of the label mark KYK in India, used since 1993, and that the goods were sold in a distinctive trade dress. The defendants, carrying on business outside the court's jurisdiction, were using an identical mark KYK and a deceptively similar trade dress for identical goods. The plaintiffs sought leave under Clause XIV of the Letters Patent to combine the cause of action for passing off with that of infringement. The court granted leave without serious objection. On the merits, the court found a prima facie case of infringement and passing off, noting that the defendants' adoption appeared dishonest. The balance of convenience was in favor of the plaintiffs, and irreparable loss would be caused if an injunction was not granted. The court restrained the defendants from using the mark KYK or any deceptively similar mark and trade dress, and appointed a court receiver to take inventory of infringing goods. The notice of motion was made absolute in terms of prayer clauses (a) and (b).
Headnote
A) Intellectual Property - Trademark Infringement - Registered Trademark - Trade Marks Act, 1999, Sections 28, 29 - The plaintiffs, proprietors of the registered trademark KYK, sought to restrain the defendants from using an identical mark and similar trade dress for engineering tools. The court found a prima facie case of infringement and passing off, and granted an interim injunction. (Paras 4-8) B) Intellectual Property - Passing Off - Trade Dress - Common Law - The plaintiffs' distinctive packaging and get-up for KYK products were copied by the defendants, creating a likelihood of confusion. The court held that the defendants' adoption was dishonest and granted relief. (Paras 5-7) C) Civil Procedure - Leave under Clause XIV of Letters Patent - Jurisdiction - The plaintiffs sought leave to combine causes of action for infringement (within jurisdiction) and passing off (outside jurisdiction). The court allowed the leave petition as there was no serious objection. (Paras 2-3)
Issue of Consideration
Whether the plaintiffs are entitled to an interim injunction restraining the defendants from using the mark KYK and similar trade dress, and whether leave under Clause XIV of the Letters Patent should be granted to combine causes of action for infringement and passing off.
Final Decision
Leave Petition No.139 of 2019 is allowed. Notice of Motion No.2198 of 2019 is made absolute in terms of prayer clauses (a) and (b), granting an interim injunction restraining the defendants from using the mark KYK or any deceptively similar mark and trade dress, and appointing a court receiver to take inventory of infringing goods.
Law Points
- Trademark infringement
- passing off
- trade dress protection
- Clause XIV Letters Patent
- interim injunction
- balance of convenience
- irreparable loss
