Full Judgment Text
2020:BHC-OS:2949
1/4 903 NMCD 2120-19.doc
Chittewan
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.2120 OF 2019
WITH
COMMERCIAL IP SUIT NO.1115 OF 2019
Kinjal Ramesh Savla … Applicant/Plaintiff
Versus
Euphoric Innovations Private
Limited … Defendant
…..
Dr. Veerendra Tulzapukar, Senior Advocate a/w Mr. Hiren Kamod a/w
Miss. Priya Pandey i/b Eternity Legal for the Applicant/Plaintiff.
Mr. Janak Dwarkadas, Senior Advocate a/w Dinyar Madon-Senior
Advocate, Mr. Chirag Kamdar, Mr.Meit Sampat, Ms. Chandni Dewani,
Dr. Sheetal Vohra and Mr. Shridharan i/b Little & Co. for the
Defendant.
…..
CORAM : S.C. GUPTE, J.
DATE : 30 JANUARY 2020
(Oral Judgement)
. This Notice of Motion is taken out in a commercial IP suit
claiming infringement of a registered trademark as well as breach of
copyright and passing off of goods.
2 The Plaintiff’s trademark, originally adopted, is “BUCKAROO”.
It is claimed to be an essential part of his business. He holds a
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
2/4 903 NMCD 2120-19.doc
Chittewan
registration for the trademark. Beside the word mark “Buckaroo” and
its depiction in different device marks, all of which are registered
separately as trademarks, the Plaintiff also has registration for the
word marks “Jackaroo” and “Vaquaroo”. It is the Plaintiff’s case that
the Defendant is infringing its aforesaid registered trademarks and
also passing off its goods as the goods of the Plaintiff. Considering
that the Defendant holds a registration for the rival mark
“WALKAROO”, Mr. Tulzapurkar, learned Senior Counsel appearing for
the Plaintiff, restricts his case to the common law action of passing
off.
3 The only case of Mr. Tulzapurkar, in support of his plea of
passing off, is the similarity of the two marks. It is, in the first
place, doubtful if a registered proprietor of a trademark, who cannot
be restrained from using his registered trademark for an alleged
infringement, can still be restrained from using it on the basis of the
common law tort of passing off, merely on the ground of resemblance
of his trademark to the other registered trademark. No doubt, as
Mr. Tulzapurkar submits, there could be a case of passing off against
a proprietor of a trademark, who holds registration for his mark; it
may well be possible to say that the use of the mark by the
defendant, having regard to the manner of representation or any other
appropriate element, other than a mere phonetic or visual similarity
between the two marks, is dishonest or that he is thereby trying to
pass off his goods as the goods of the plaintiff. Of course, this is not
to say that the plaintiff cannot at all base his action of passing off on
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
3/4 903 NMCD 2120-19.doc
Chittewan
deceptive similarity between the two marks. The Plaintiff, for
example, may make out a case of a very strong reputation and
goodwill built around his mark so that the very adoption, particularly
in the light of the manner or the time of such adoption, on the part
of the defendant, may be termed as dishonest or as something
calculated to trade on the reputation and goodwill of the plaintiff, and
which makes out a serious case of confusion amongst the consuming
public. The point of the matter is that prima facie the plaintiff must
show some other element besides mere phonetic or visual similarity
for seeking relief in passing off in case the defendant’s offending mark
is a registered trade mark. The trade mark, for sustaining a claim of
passing off, must be shown to have acquired reputation among the
general public; it should appear that the public associate the particular
trademark with particular goods. That would primarily depend on
extensive use and promotion of the mark. As the Supreme Court held
1
,
in Corn Products Refining Co. Vs. Shangrila Food Products Limited
presence of a mark in the register does not by itself prove its user.
Besides reputation, it must also be shown that there is a clear
likelihood of deception or confusion amongst the public if the
defendant is allowed to use the offending mark. At this interim stage,
on the basis of the facts and materials placed before this court, it is
not possible to come to any such conclusion or grant any injunctive
relief. Such relief, if at all, must await a full-blown trial, where the
parties may lead their respective evidence.
1 AIR 1960 Supreme Court 142
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
4/4 903 NMCD 2120-19.doc
Chittewan
4 Besides, and in any event, at this prima facie stage, it is not
possible to say merely by looking at the marks that the marks
“Buckaroo” or “Jackaroo” or “Vaquaroo” on the other hand, and
“Walkaroo”, on the other, have such phonetic or visual similarity so
as to indicate, by reason of it alone, a strong possibility of deception
or confusion, which might ensue and which ought to be prevented at
the very interim stage.
5 The Notice of Motion is, in the premises, dismissed. The
Commercial IP Suit to come up on 13 February 2020 as per CMIS.
(S.C. GUPTE, J.)
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
1/4 903 NMCD 2120-19.doc
Chittewan
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO.2120 OF 2019
WITH
COMMERCIAL IP SUIT NO.1115 OF 2019
Kinjal Ramesh Savla … Applicant/Plaintiff
Versus
Euphoric Innovations Private
Limited … Defendant
…..
Dr. Veerendra Tulzapukar, Senior Advocate a/w Mr. Hiren Kamod a/w
Miss. Priya Pandey i/b Eternity Legal for the Applicant/Plaintiff.
Mr. Janak Dwarkadas, Senior Advocate a/w Dinyar Madon-Senior
Advocate, Mr. Chirag Kamdar, Mr.Meit Sampat, Ms. Chandni Dewani,
Dr. Sheetal Vohra and Mr. Shridharan i/b Little & Co. for the
Defendant.
…..
CORAM : S.C. GUPTE, J.
DATE : 30 JANUARY 2020
(Oral Judgement)
. This Notice of Motion is taken out in a commercial IP suit
claiming infringement of a registered trademark as well as breach of
copyright and passing off of goods.
2 The Plaintiff’s trademark, originally adopted, is “BUCKAROO”.
It is claimed to be an essential part of his business. He holds a
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
2/4 903 NMCD 2120-19.doc
Chittewan
registration for the trademark. Beside the word mark “Buckaroo” and
its depiction in different device marks, all of which are registered
separately as trademarks, the Plaintiff also has registration for the
word marks “Jackaroo” and “Vaquaroo”. It is the Plaintiff’s case that
the Defendant is infringing its aforesaid registered trademarks and
also passing off its goods as the goods of the Plaintiff. Considering
that the Defendant holds a registration for the rival mark
“WALKAROO”, Mr. Tulzapurkar, learned Senior Counsel appearing for
the Plaintiff, restricts his case to the common law action of passing
off.
3 The only case of Mr. Tulzapurkar, in support of his plea of
passing off, is the similarity of the two marks. It is, in the first
place, doubtful if a registered proprietor of a trademark, who cannot
be restrained from using his registered trademark for an alleged
infringement, can still be restrained from using it on the basis of the
common law tort of passing off, merely on the ground of resemblance
of his trademark to the other registered trademark. No doubt, as
Mr. Tulzapurkar submits, there could be a case of passing off against
a proprietor of a trademark, who holds registration for his mark; it
may well be possible to say that the use of the mark by the
defendant, having regard to the manner of representation or any other
appropriate element, other than a mere phonetic or visual similarity
between the two marks, is dishonest or that he is thereby trying to
pass off his goods as the goods of the plaintiff. Of course, this is not
to say that the plaintiff cannot at all base his action of passing off on
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
3/4 903 NMCD 2120-19.doc
Chittewan
deceptive similarity between the two marks. The Plaintiff, for
example, may make out a case of a very strong reputation and
goodwill built around his mark so that the very adoption, particularly
in the light of the manner or the time of such adoption, on the part
of the defendant, may be termed as dishonest or as something
calculated to trade on the reputation and goodwill of the plaintiff, and
which makes out a serious case of confusion amongst the consuming
public. The point of the matter is that prima facie the plaintiff must
show some other element besides mere phonetic or visual similarity
for seeking relief in passing off in case the defendant’s offending mark
is a registered trade mark. The trade mark, for sustaining a claim of
passing off, must be shown to have acquired reputation among the
general public; it should appear that the public associate the particular
trademark with particular goods. That would primarily depend on
extensive use and promotion of the mark. As the Supreme Court held
1
,
in Corn Products Refining Co. Vs. Shangrila Food Products Limited
presence of a mark in the register does not by itself prove its user.
Besides reputation, it must also be shown that there is a clear
likelihood of deception or confusion amongst the public if the
defendant is allowed to use the offending mark. At this interim stage,
on the basis of the facts and materials placed before this court, it is
not possible to come to any such conclusion or grant any injunctive
relief. Such relief, if at all, must await a full-blown trial, where the
parties may lead their respective evidence.
1 AIR 1960 Supreme Court 142
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::
4/4 903 NMCD 2120-19.doc
Chittewan
4 Besides, and in any event, at this prima facie stage, it is not
possible to say merely by looking at the marks that the marks
“Buckaroo” or “Jackaroo” or “Vaquaroo” on the other hand, and
“Walkaroo”, on the other, have such phonetic or visual similarity so
as to indicate, by reason of it alone, a strong possibility of deception
or confusion, which might ensue and which ought to be prevented at
the very interim stage.
5 The Notice of Motion is, in the premises, dismissed. The
Commercial IP Suit to come up on 13 February 2020 as per CMIS.
(S.C. GUPTE, J.)
::: Uploaded on - 05/03/2020 ::: Downloaded on - 26/06/2024 07:26:08 :::