Case Note & Summary
The appellant, MESO Private Limited, manufactures and sells cosmetic products including perfumes under the trademarks 'Legend' and 'Flirt'. The respondents, Liberty Shoes Ltd and Liberty Lifestyle, launched perfumes with the same names in 2018. MESO filed a trademark suit seeking an injunction, which was initially granted ex parte but later vacated by the learned Single Judge. MESO appealed. The court noted that the trademarks 'Legend' and 'Flirt' are common dictionary words and that both parties use their respective house marks (Devon for MESO, Liberty for respondents) prominently on their products. The court found no evidence of actual confusion or passing off. The balance of convenience did not favor granting an injunction as the respondents had been selling their products for over a year without complaint. The appeal was dismissed, and the interim order was confirmed.
Headnote
A) Trade Marks - Infringement and Passing Off - Interim Injunction - Common Dictionary Words - The court considered whether the use of common dictionary words 'Legend' and 'Flirt' by both parties for perfumes constituted infringement or passing off. The court held that when marks are common dictionary words, the plaintiff must show distinctiveness and likelihood of confusion, and the use of a house mark (Devon by appellant, Liberty by respondents) distinguishes the products. (Paras 1-10)
B) Trade Marks - Interim Injunction - Balance of Convenience - The court assessed the balance of convenience and held that the respondents had been using the marks since 2018 without evidence of confusion, and the appellant had not established a prima facie case of deception. The balance of convenience favored the respondents. (Paras 11-15)
Issue of Consideration
Whether the appellant is entitled to an interim injunction restraining the respondents from using the trademarks 'Legend' and 'Flirt' for perfumes, pending the suit.
Final Decision
Appeal dismissed. The order of the learned Single Judge vacating the interim injunction is confirmed.
Law Points
- Trademark infringement
- Passing off
- Deceptive similarity
- Common dictionary words
- House mark
- Interim injunction
- Balance of convenience
Case Details
2019 LawText (BOM) (08) 82
Commercial Appeal No. 362 of 2019 in Comm. Notice of Motion (L) No. 1184 of 2019 in ComIP Suit (L) No. 551 of 2019
Pradeep Nandrajog, C.J., Nitin Jamdar, J.
Dr. Virendra Tulzapurkar, Senior Advocate with Mr. Hiren Kamod, Mr. Ramesh Gajria, Ms. Raina Gajria, Ms. Rinku Gajria and Ms. Amritha Vyas i/b. Gajria & Co. for the Appellant. Dr. Abhinav Chandrachud with Mr. Rishikesh Bidkar, Ms. Suchita Uppal and Mr. Ayush Jain i/b. Hariani & Co. for Respondent No.1.
Liberty Shoes Ltd and Liberty Lifestyle
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Nature of Litigation
Commercial appeal against order vacating interim injunction in a trademark infringement and passing off suit.
Remedy Sought
Appellant sought grant of interim injunction restraining respondents from using trademarks 'Legend' and 'Flirt' for perfumes.
Filing Reason
Appellant claimed trademark infringement and passing off by respondents using identical marks for similar products.
Previous Decisions
Learned Single Judge initially granted ex parte ad-interim injunction, which was subsequently vacated.
Issues
Whether the appellant has a prima facie case for trademark infringement and passing off.
Whether the balance of convenience favors granting an interim injunction.
Submissions/Arguments
Appellant argued that it is the registered proprietor of trademarks 'Legend' and 'Flirt' and that respondents' use of identical marks for identical goods constitutes infringement and passing off.
Respondents argued that 'Legend' and 'Flirt' are common dictionary words, that they use their house mark 'Liberty' prominently, and that there is no likelihood of confusion.
Ratio Decidendi
When trademarks are common dictionary words, the plaintiff must show distinctiveness and likelihood of confusion. The use of a prominent house mark distinguishes the products. Balance of convenience does not favor injunction where no actual confusion is shown and the defendant has been using the mark for a significant period.
Judgment Excerpts
We are not inclined to grant an injunction as prayed for.
The trademarks Legend and Flirt are common dictionary words.
The use of the house mark 'Devon' by the appellant and 'Liberty' by the respondents distinguishes the products.
Procedural History
MESO filed a trademark suit (ComIP Suit (L) No. 551 of 2019) and moved for an injunction. The learned Single Judge initially granted an ex parte ad-interim injunction, which was later vacated. MESO appealed to the Division Bench.
Acts & Sections
