Permanent Injunction of trademark- some real time examples

An injunction is a legal action which is carried by a court. In simple terms, an injunction means that one of the parties to a certain action must either do something or abstain from doing something. Once the court provides its decision, the both parties must obey by the trademark Act ruling. If the party fails to stick to the injunction, there can be stiff fiscal penalties and even imprisonment in certain situations. Permanent injunction is one of the types of injunction which is provided by a court at the end of a lawsuit. A permanent injunction order requires a party to do or abstain from a particular act.

Usually, certain reasons are considered by courts when providing permanent injunction, they are:

1. If the legal remedy is inadequate;
2. If property right is at issue;
3. If enforcing the decree would be feasible;
4. If the hardships balance in plaintiff’s favor; and
5. If all defenses have been overcome.

Suit claiming permanent injunction restraining defendant from using the mark “AMAN” associated with exclusive resorts and properties

Here, the defendant does not dispute that it uses the AMAN mark, in respect of a hotel, established by it; it also has similar services, with the said mark. While the defendant’s use may be bona fide, there is no gain saying that once it decided to enter the hospitality business, after the plaintiff had used the mark in India, and secured its trademark registration, it amounted to infringement. In such cases, the only defense available is prior user of the mark. Now, while the defendant had been using the mark previously in respect of ticketing and travel related services, that use, prima facie did not entitle it to use a mark identical or similar to an existing registered mark, i.e., the plaintiff’s AMAN marks. Contrary to the argument of different markets for the two hotels, the decision in Dongre has noted that where a rival or junior mark prices his goods or services at significantly cheaper rates than the plaintiff, there is likelihood of reputation loss. There is perhaps a ring of truth in the defendant’s argument here, when it says that its room rates are a fraction of what the plaintiff charges. Yet, the court cannot be unmindful of the fact that in an Internet driven era, the consumer may be led to the defendant’s site. There can be cases of confusion. While that may not happen, with some discerning customers, the possibility cannot be ruled out. In view of the above discussion, it is held that the defendant’s use of the AMAN marks in respect of the hotel and hotel related services rendered by it, prima facie amounts to infringement of the plaintiff’s mark. The defendant is a later entrant in this market. There is no significant factor showing that grant of an ad-interim permanent injunction would irreparably harm or prejudice it. In these circumstances, the defendants are hereby restrained from using the AMAN or any mark resembling the plaintiff’s AMAN marks, or logos associated with them, in respect of the hotel and hospitality services offered by them; they shall also not use the AMAN mark in their domain names as regards the hotel hospitality services. The applications are accordingly disposed of.

Suit for permanent injunction in respect of trademark ‘Ananda’ registered in clause 42 for luxury health spas

There is no material on record to show that the mark “Ananda” has acquired such high brand equity in India that its use by persons other than the plaintiff in respect of totally unrelated goods or services will dilute the reputation which the brand “Ananda” enjoys in India. In my view, considering an altogether different nature of the product being promoted by the defendant, coupled with the use of the words “Bestech Parkview” before the word Ananda, there is no reasonable possibility of any confusion being caused among the customers as regards the source of the product being offered by the defendant not is there any reasonable probability of any damage to the reputation which is claimed to be enjoyed by the trademark “Ananda” in India. Considering the origin of the word Ananda which means nothing, but bliss and which is used primarily to express a state of mind of a human being, it is difficult to say that this word has become distinctive with the plaintiff company and the defendant is trying to take an unfair advantage by using this word as a part of the name being used by it to promote it housing project in Gurgaon.  In the facts and circumstances of the case, I find it difficult to accept of the defendant company by use of the word “Ananda” as the part of the name of the project at Gurgaon is to capitalize on the reputation which the trademark “Ananda” claims to enjoy in hospitality sector. The documents filed by the defendant shows that the mark “Anand Agency” has been registered in class 42 in the name of “Daulat Ram Takhatmal Mehani” Since 01.01.1990 vide Registration no. 1243892, the mark Anandam (label) has been registered in class 42 in the name of Raji Suresh since 01.08.2001 in respect of providing food and drink in packet and non-packet forms, the mark “Anandam” has been registered in the name of Daljeet Gambhir in class 42 in respect of temporary accommodation (guest or hotel house), the mark “Ananda Utsav” (label) has been registered in the name of M/s Anandam in respect of Ayurvedic treatment Services, the mark “Ananda Valley Valley of Joy” (device) has been registered in Class 42 in favor of Anand Ramlal Kataria in respect of service of temporary accommodation, agricultural services family week and service, eco tour, nature walk, corporate meet treak, event, leisure, meditation service.

Suit for injunction to protect the registered mark

In my view, the defendant cannot be said to have committed the tort of passing off if the test set out above are applied to the facts obtaining in the instant case. The defendant’s trademark “BELLS WHIP TOPPING” when looked at in the setting in which the mark is affixed, which has a picture of a cake on the cover, leaves no doubt in my mind that there is not even a slightest attempt to deceive by the defendant. The defendant on the packaging has prominently alluded to the fact that the product is being sold by it as “Bell’s” non-dairy “Whip Topping”. Therefore, merely because it uses of red, blue, and white colors would not, to my mind, be sufficient to constitute a tort of permanent passing off.

As regards the similarity in the handling instructions and the directions for the use of the product, which form part of the packaging, I tend to agree with the learned counsel for the defendant that are plaintiff have not placed any evidence on record to show that it has a copyright in the said handling instructions or directions for the use of the product. Though the instructions and the directions for the use of the product. Though the instructions and the directions may have an element of similarity, unless the plaintiff is able to adduce evidence to support its claim, which, as stated above, it did not produce i.e. it is the originator of those instructions; it cannot seek any rights in respect of the same. Let me also deal with some of the other submissions made on behalf of the plaintiffs. The argument of Mr. Gupta that the sales shown by the defendant is only Rs. 17 Crores, that too, in the year 2002-03 which is not supported by the requisite evidence, cannot in my view endure to the benefit of the plaintiffs at the final stage because the onus of the proof with respect to distinctiveness of the mark lays on the plaintiff, which in my opinion, it has not been able to discharge. The other submission of Mr. Gupta that the defendant shall not be able to obtain trademark registration of its mark in view of the provisions of section 11 of the Trademarks Act is also predicated on a finding that the permanent plaintiff’s mark is well known in the trade. Priority of use alone shall not suffice for the purposes of Section 11 of the Trademarks Act, given in the facts and circumstances of this case, and my observations made herein above on “distinctiveness” achieved by the plaintiff’s mark. On the issue of validity of presumption arising under Section 31 of the Trademarks Act in favor of the plaintiffs in view of its marks having been registered has already been answered by me while examining the scheme of the Trademarks Act. This submission does not need any further elaboration.

In view of the observations above, my answers to the issues framed are as follows:

• In so far as Issue No.1 is concerned my opinion is as follows: While it cannot be denied that the plaintiff has a proprietary right in the trademark “RICH’s WHIP TOPPING” in relation to goods referred to the plaint. And those rights obtain both with respect to those conferred upon the plaintiff under the Trademarks Act as well as under common law. The rights of the plaintiffs do not extend to a part of the trademark, i.e. “WHIP TOPPING”. Rights in the entire or “whole” does not necessarily translate into a right in a “part” of the trademark-as in this case. The issue is answered accordingly.
• As regards Issue Nos. 2 and 3 are concerned the plaintiff has not been able to discharge its ouns with respect to trademark “RICH’S WHIP TOPPING” with obvious emphasis on “WHIP TOPPING” has acquired secondary distinctive meaning and, therefore, trans-border reputation. The plaintiffs on their own accord having accepted the limitation both in USA and New Zealand with respect to the exclusive right to use the word “TOPPING” and “WHIP TOPPING” both of which form part of its registered trademark “RICH’S WHIP TOPPING”. Similarly, in India the plaintiff has accepted disclaimer in respect of letter “S” and the word “Topping” once again as part of its trademark “RICH’s WHIP TOPPING”. Consequently, both the issues are found against the plaintiff’s.
• Issue Nos.4 and 5 are answered against the plaintiff and in favor of the defendant in as much as neither the defendant’s mark “BELLS WHIP TOPPING” nor the defendant’s packaging and or trade dress is deceptively or confusingly similar to the plaintiffs trademark “RICH’S WHIP TOPPING” or its packaging or even its trade dress.
• Issues Nos. 7 to 10 are also answered in favor of the defendant and against the plaintiffs. The word “WHIP TOPPING” which forms a part of the plaintiff’s mark is not a coined word but is both generic and descriptive of the product. The words have not acquired a secondary meaning.
• In view of the observations above, the issue No.6 is also answered against the plaintiff. The plaintiffs are hence not entitled to any damages as claimed or at all.
• In so far as Issue No.11 and 12 are concerned, I am of the view that both these issues have to be found in favor of the plaintiff. The plaintiff is not guilty of concealment in view of the fact that the document pertaining to disclaimer of letter “S” and the word “Topping” had been filed. Even though it is conceded, and I must say, quite fairly by the learned senior counsel for the permanent plaintiff that the pleadings do not allude to the aspect of the disclaimer, this, in my point of view, may have been oversight, which cannot be termed as an act of concealment. In any event, as submitted by Mr. Gupta, this cannot determine the outcome of the proceeding in the final analysis. Since, in any event, every issue has been determined on, merits this issue has really been relegated to the background. Accordingly, I find the issue in favor of the plaintiff and against the defendant.
• As regards whether the suit is barred on account of delay and latches and acquiescence, I am of the view that the said issue has to be once again found in favor of the plaintiff and against the defendant. The reason for the same being that there is nothing put on record by way of permanent evidence by the defendant to suggest that the plaintiffs’ assertion, that it came to know of the defendant’s use of what it claims as infringing mark, i.e. “BELLS WHIP TOPPING” only in April, 2003 as false. The plaintiff’s alacrity from then on is documented in the cease and desist notice` dated 23.04.2003 issued to the defendant. The reply to the said notice was received by the plaintiff undisputedly on 13.05.2003. The instant suit was filed in March, 2004. Therefore, while there may have been some delay, and perhaps some degree of latches in not coming to the court at the earliest, it most certainly is not a case of acquiescence. It would also perhaps be useful to call out the distinction between acquiescence and latches. The meaning of the word “acquiescence” would perhaps also depend on the context in which it is used. In the present context, amongst various meanings ascribed to the word, the closest would be the following given in Corpus Juris Secundum Volume 1 & Black’s Law dictionary, Sixth(6^th) Edition. “Acquiescence the word, it has been said, implies acceptance or approval, active assent, active consent, assent, assent or consent, consent, also knowledge, and power to contract”. In Black’s Law Dictionary, Sixth (6^th) edition at page 24 “Acquiescence- conduct recognizing the existence of a transaction, and intended, in some extent at least, to carry the transaction, or permit it to be carried, into effect”.

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