Case Note & Summary
The plaintiffs, Sopariwala Exports (a partnership firm) and another company, are engaged in manufacturing and marketing tobacco under the trademark 'AFZAL' since 1977. They have registered trademarks bearing nos. 445798, 1230032, and 1530553 in Class 34, and also have a registered copyright in the artistic work on their label. The defendants, Kuber Khaini Private Limited and another company based in Nepal, manufacture and market chewing tobacco under the trademark 'KUBER'. The plaintiffs filed a suit alleging that the defendants' label is deceptively similar to their registered trademark and artistic work, constituting trademark infringement, passing off, and copyright infringement. Along with the suit, they filed a notice of motion for interim relief. By consent of parties, the motion was heard finally. The plaintiffs argued that they have used the mark since 1977, made huge sales domestically and internationally, and earned goodwill. They contended that the defendants' label is identical or deceptively similar, infringing their statutory rights. The defendants opposed, but the court found that the plaintiffs had made out a strong prima facie case. The court held that the defendants' label is deceptively similar to the plaintiffs' registered trademark, and the defendants are likely to pass off their goods as those of the plaintiffs. The court also found infringement of copyright in the artistic work. The balance of convenience was in favour of the plaintiffs, and irreparable harm would be caused if injunction was not granted. Accordingly, the court allowed the notice of motion and granted an interim injunction restraining the defendants from using the impugned label or any deceptively similar mark until the disposal of the suit.
Headnote
A) Trade Marks Act, 1999 - Infringement - Registered Trade Mark - Deceptive Similarity - The plaintiffs, owners of registered trademarks 'AFZAL' in Class 34, sought injunction against defendants using deceptively similar label 'KUBER' - Court found prima facie case of infringement due to similarity in get-up, colour combination, and overall layout - Held that the defendants' label is deceptively similar to plaintiffs' registered trademark, warranting interim protection (Paras 1-10). B) Passing Off - Goodwill and Reputation - The plaintiffs established long-standing use since 1977, substantial sales, and goodwill - Defendants' use of similar trade dress likely to cause confusion and pass off their goods as plaintiffs' - Held that plaintiffs made out a strong prima facie case for passing off (Paras 4-6). C) Copyright Act, 1957 - Infringement - Artistic Work - The plaintiffs' label is an original artistic work authored by Shri Jagdish Verma and registered - Defendants' label is a substantial copy - Held that defendants have infringed plaintiffs' copyright in the artistic work (Paras 4, 10). D) Interim Injunction - Balance of Convenience - Plaintiffs' long use and registration versus defendants' recent adoption - Irreparable harm to plaintiffs if injunction not granted - Held that balance of convenience is in favour of plaintiffs (Paras 10-12).
Issue of Consideration
Whether the plaintiffs are entitled to an interim injunction restraining the defendants from infringing their registered trademarks, passing off their products, and infringing their copyright in the artistic work on the label.
Final Decision
The Notice of Motion is allowed. The defendants, their servants, agents, etc., are restrained by an interim injunction from using the impugned label or any other label deceptively similar to the plaintiffs' registered trademarks and artistic work, until the disposal of the suit.
Law Points
- Trademark infringement
- Passing off
- Copyright infringement
- Interim injunction
- Deceptive similarity
- Registered trademark
- Artistic work
- Class 34
