Case Note & Summary
The plaintiff, Drums Food International Pvt. Ltd., filed a suit seeking a declaration that a cease and desist notice issued by the defendants, Euro Ice Cream & Anr., was unjustified and that the plaintiff's use of the mark 'HOKEY POKEY' did not infringe the defendants' registered trademark under class 30 or constitute passing off. The plaintiff also sought an injunction restraining the defendants from issuing threats and from using the mark. The defendants had registered a label mark containing 'HOKEY POKEY' under class 30 with effect from 29th November 2001. The plaintiff admitted to starting use of the mark in respect of items under class 30 only in November 2007, after the defendants' registration. The plaintiff had obtained registration of the mark under class 16 (stationery) in March 2008, but its application under class 30 was pending. The court considered the issue of whether the plaintiff was entitled to an injunction despite its subsequent use. The plaintiff argued that it had used the mark before the defendants and relied on Section 27 of the Trade Marks Act, 1999, which saves passing off actions. The court, however, relied on the decision in Sun Pharmaceutical Industries Limited v. CIPLA Limited, where similar facts led to the denial of an injunction. The court held that the defendants' prior registration under class 30 gave them superior rights, and the plaintiff's subsequent use could not override that. The court dismissed the notice of motion, finding no prima facie case in favor of the plaintiff.
Headnote
A) Trademark Law - Passing Off - Prior Registration vs. Subsequent Use - Trade Marks Act, 1999, Section 27 - The plaintiff sought injunction against defendant's cease and desist notice for using mark 'HOKEY POKEY' after defendant's registration under class 30. Court held that despite Section 27 saving passing off actions, the plaintiff's subsequent use cannot override the defendant's prior registration. The plaintiff failed to establish a prima facie case for injunction. (Paras 4-7) B) Trademark Law - Injunction - Prima Facie Case - Trade Marks Act, 1999 - The court considered the principle from Sun Pharmaceutical Industries Limited v. CIPLA Limited that prior registration of a trademark under the same class gives superior rights over a subsequent user, even if the subsequent user commenced actual use before the registered proprietor. The plaintiff's use from November 2007 was after defendant's registration effective from November 2001, thus no injunction granted. (Paras 5-7)
Issue of Consideration
Whether a plaintiff who started using a trademark after the defendant's registration of the same mark under class 30 is entitled to an injunction against the defendant's cease and desist notice and for passing off.
Final Decision
The Notice of Motion is dismissed. The court answered the question against the plaintiff, holding that the plaintiff is not entitled to an injunction.
Law Points
- Trademark registration without use does not confer right to sue for passing off
- Prior registration of trademark under same class prevails over subsequent user in passing off action
- Section 27 of Trade Marks Act
- 1999 saves passing off actions but does not override prior registration rights
