Case Note & Summary
The appellant, Parksons Cartamundi Pvt. Ltd., filed a suit for infringement of its registered trademark 'MERELANE' and for passing off against the respondent, Suresh Kumar Jasraj Burad, who used the mark 'MARICELL No.7' for playing cards. The learned Single Judge declined to grant an ad-interim injunction, finding no prima facie similarity between the marks. On appeal, the Division Bench of the Bombay High Court reversed this decision. The court noted a history of litigation between the parties, including a consent order in a previous suit where the defendant agreed not to use 'MERELANE' or any deceptively similar mark. The court found that 'MERELANE' and 'MARICELL' are phonetically and structurally similar, both being three-syllable words ending with 'ELL' and sharing the prefix 'MARI'/'MERE'. The court held that the plaintiff has a strong prima facie case, the balance of convenience is in favor of granting an injunction, and the plaintiff would suffer irreparable loss if the injunction is not granted. The appeal was allowed, and the defendant was restrained from using the mark 'MARICELL' or any deceptively similar mark pending the suit.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Sections 29, 134 Trade Marks Act, 1999 - The court considered whether the marks 'MERELANE' and 'MARICELL' are deceptively similar. The Division Bench held that there is prima facie phonetic and structural similarity between the two marks, as both are three-syllable words ending with 'ELL' and share the prefix 'MARI'/'MERE'. The court found that the learned Single Judge erred in concluding no similarity, and that the marks are likely to cause confusion in the trade of playing cards. (Paras 2, 10-12) B) Trademark Law - Passing Off - Prior Litigation - The court noted a history of litigation between the parties, including a consent order in a previous suit where the defendant agreed not to use 'MERELANE' or any deceptively similar mark. The court held that the defendant's use of 'MARICELL' violates the spirit of the earlier consent order and constitutes passing off. (Paras 4, 13-15) C) Civil Procedure - Interim Injunction - Balance of Convenience - The court held that the balance of convenience is in favor of granting an interim injunction, as the plaintiff has a strong prima facie case and would suffer irreparable loss if the defendant continues to use the mark. The defendant's use of the mark is recent and the plaintiff has been using 'MERELANE' since 1971. (Paras 16-18)
Issue of Consideration
Whether the appellant-plaintiff is entitled to an ad-interim injunction against the respondent-defendant for infringement of the registered trademark 'MERELANE' and passing off, given the alleged similarity between 'MERELANE' and 'MARICELL'.
Final Decision
The appeal is allowed. The order of the learned Single Judge is set aside. The defendant is restrained by an order of interim injunction from using the mark 'MARICELL' or any other mark deceptively similar to the plaintiff's registered trademark 'MERELANE' pending the hearing and final disposal of the suit.
Law Points
- Trademark infringement
- passing off
- copyright infringement
- deceptive similarity
- phonetic similarity
- structural similarity
- prior litigation
- balance of convenience
- irreparable loss
