Case Note & Summary
The plaintiffs, Hem Corporation Pvt. Ltd. and three individuals (erstwhile partners of a firm), filed a suit for trademark infringement and passing off against ITC Limited. Plaintiff No.1 claimed to be the registered proprietor of the marks 'MADHUR GULAB', 'MADHUR', and the word 'MADHUR' in Devnagiri script, registered under the Trade & Merchandise Marks Act, 1958. The defendant challenged the plaintiff's proprietorship and right to sue. The court traced the title of the marks from the partnership firm 'Hem Agencies' (later 'Hema Agencies') to the plaintiff company through a deed of assignment and subsequent registration. The court found that the plaintiff had made out a prima facie case for infringement and granted an interim injunction against infringement. However, the court declined to consider the passing off claim at this stage due to pending rectification proceedings before the Registrar under Section 124 of the Trade Marks Act, 1999. The court reserved the passing off issue for later determination.
Headnote
A) Trademark Law - Infringement - Registered Proprietor - Trade Marks Act, 1999, Sections 28, 29 - Plaintiff claimed to be registered proprietor of marks 'MADHUR GULAB' and 'MADHUR' - Defendant challenged plaintiff's title and right to sue - Court traced title from partnership firm to plaintiff company - Held that plaintiff has made out a prima facie case for infringement and granted interim injunction against infringement (Paras 1-10).
B) Trademark Law - Passing Off - Pending Rectification - Trade Marks Act, 1999, Section 124 - Plaintiff's action for passing off could not be considered due to pending rectification proceedings before the Registrar - Court declined to grant interim relief on passing off at this stage (Para 1).
Issue of Consideration
Whether the plaintiff is entitled to interim reliefs in an action for infringement and passing off of the trademark 'MADHUR GULAB' and 'MADHUR'.
Final Decision
Interim injunction granted against infringement of the plaintiff's registered trademarks. Passing off claim not considered at this stage due to pending rectification proceedings.
Law Points
- Trademark Infringement
- Passing Off
- Registered Proprietor
- Part B Registration
- Pending Rectification
- Interim Injunction
Case Details
2012 LawText (BOM) (04) 68
Notice of Motion No. 3940 of 2009 in Suit No. 2808 of 2009
Dr. Virendra Tulzapurkar, senior counsel with Mr. Salil Shah and Mr. Ramesh Gajria i/b M/s. Gajria & Co. for the Plaintiffs; Mr. Iqbal Chagla, senior counsel with Mr. Sanjay Kher, Ms. Tanmayi Rajadhayaksha, Mr. Nimesh Kothare, Ms. Vijayalaxmi Kulkarni and Mr. Anup Lahoti i/b M/s. Nanu Hormasjee & Co. for the Defendant.
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Nature of Litigation
Civil suit for trademark infringement and passing off.
Remedy Sought
Interim reliefs including injunction against infringement and passing off.
Filing Reason
Plaintiff claimed defendant used deceptively similar marks causing infringement and passing off.
Issues
Whether the plaintiff is the registered proprietor of the marks 'MADHUR GULAB' and 'MADHUR'.
Whether the plaintiff is entitled to interim injunction against infringement.
Whether the plaintiff's passing off claim can be considered at this stage given pending rectification proceedings.
Submissions/Arguments
Plaintiff argued it is the registered proprietor of the marks and entitled to interim relief.
Defendant challenged plaintiff's title and right to sue, and argued that passing off claim is barred due to pending rectification.
Ratio Decidendi
A plaintiff who is the registered proprietor of a trademark is entitled to interim injunction against infringement if a prima facie case is made out. However, a passing off claim may be deferred if rectification proceedings are pending under Section 124 of the Trade Marks Act, 1999.
Judgment Excerpts
This is an application for the usual interim reliefs in an action for infringement and passing off.
I have granted interim reliefs against infringement but not against passing off.
I am unable to consider the plaintiff's action for passing off at this stage by reason of certain orders I will refer to later.
Procedural History
Suit No. 2808 of 2009 filed by plaintiffs. Notice of Motion No. 3940 of 2009 taken out for interim reliefs. Plaintiffs 2-4 impleaded on 4th October 2011. Judgment reserved on 27th March 2012 and pronounced on 11th April 2012.
Acts & Sections
- Trade & Merchandise Marks Act, 1958:
- Trade Marks Act, 1999: Section 124
- Companies Act, 1956: Chapter IX
