Case Note & Summary
The plaintiff, M/s. Neon Laboratories Limited, filed a suit for infringement and passing off against the defendants, M/s. Medical Technologies Ltd. and M/s. Claris Lifesciences Ltd., regarding the use of the mark 'PROFOL'. The plaintiff is the registered proprietor of the mark 'ROFOL' since 1992, while the defendant applied for 'PROFOL' in 1995 and started using it in 1998. The court noted that it is common ground that 'PROFOL' is deceptively similar to 'ROFOL'. The plaintiff's application for registration of 'PROFOL' is pending. Due to orders from the City Civil Court at Ahmedabad and the Gujarat High Court in a suit filed by the defendant, the plaintiff is restrained from using 'ROFOL'. Therefore, this interlocutory application is restricted to infringement of the registered mark 'ROFOL' by the defendant's use of 'PROFOL'. The court held that the marks are deceptively similar, and the plaintiff's prior registration gives it exclusive rights. The balance of convenience favors the plaintiff, and an interim injunction was granted restraining the defendant from using 'PROFOL'.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Section 29 Trade and Merchandise Marks Act, 1958 - The plaintiff's registered mark 'ROFOL' and defendant's mark 'PROFOL' are phonetically and structurally similar, leading to a likelihood of confusion. The court held that the marks are deceptively similar, and the defendant's use constitutes infringement. (Paras 4, 6-10) B) Trademark Law - Prior Registration - Effect - Section 28 Trade and Merchandise Marks Act, 1958 - The plaintiff's registration of 'ROFOL' in 1992 (prior to defendant's application in 1995) gives the plaintiff exclusive rights. The court held that the plaintiff's prior registration is a strong factor in granting injunction. (Paras 5, 11-15) C) Trademark Law - Interim Injunction - Balance of Convenience - The court found that the balance of convenience lies in favor of the plaintiff, as the defendant adopted the mark later and the plaintiff would suffer irreparable loss if injunction is not granted. (Paras 16-20)
Issue of Consideration
Whether the defendant's use of the mark 'PROFOL' infringes the plaintiff's registered trademark 'ROFOL' under the Trade and Merchandise Marks Act, 1958, and whether the plaintiff is entitled to an interim injunction.
Final Decision
Interim injunction granted restraining the defendant from using the mark 'PROFOL' pending disposal of the suit.
Law Points
- Infringement of registered trademark
- deceptive similarity
- phonetic similarity
- prior use
- registration date
- interim injunction
- balance of convenience
- irreparable loss
