Filter

Open

Can a Reputable Mark Define Infringement?

02

JUN

2022

Recently, the Bombay High Court granted interim relief in a trademark dispute between RPG Enterprises vs. Riju Ghoshal and Anr, dealing with well-known marks, marks with reputation and trademark infringement.

RGP Enterprises, the plaintiff in the present case, was established in the year 1979 and was using the trademark RPG, an acronym of its founder Ram Prasad Goenka, since the company’s inception. Ram Prasad Goenka was one of the three sons in the Goenka Family who inherited a part of his deceased father’s diverse business empire involving pharmaceuticals, energy, senior care, etc. The plaintiff had secured registration for the RPG trademark and several RPG formative marks in various classes, under the provisions of the Trade Marks Act (the “Act”). The plaintiff claimed that apart from being inherently distinctive, acquiring distinctiveness owing to the continuous, and uninterrupted use and promotion of its RPG trademarks in India and around the globe, these trademarks have come to acquire secondary meaning and were exclusively associated with the plaintiff.

In 2017, the plaintiff became aware of the trademark application for the label ‘RPG Opticals’ filed by the first defendant, Riju Ghoshal trading as RPG Opticals. This application was opposed by the plaintiff. In 2018, the plaintiff also filed a rectification application against registration for the label ‘RPG Pharmacy’ which was in the name of the second defendant, Poulami Ghoshal trading as RPG Pharmacy. Both the proceedings are pending. Upon coming across advertisement hoardings for these two labels, plaintiff investigated and found that these defendants were related to one another and were using identical RPG marks for optical lenses, sunglass, pharmacy services, etc.

The plaintiff filed the suit claiming that the RPG mark has gained reputation and recognition across all classes of goods and services, owing to continuous and extensive usage and is a “well-known trademark” and the use of identical marks for related and cognate goods and services amounts to passing off and infringement. The defendant justified its adoption to be based on Riju+Poulami+Ghoshal = RPG. It pleaded dissimilarities in marks, and different business scopes since the defendant was a retailer (classes 35 and 44) as opposed to the plaintiff who was a manufacturer (class 5), and placed reliance on Section 29(5) of the Act that the defendant is simply using the mark as a trade name and that to prove infringement, the plaintiff ought to establish that the goods in which the defendant is dealing are same/identical to the former, which is not the case. The plaintiff countered these defences pleading commonality based on the medical field, its trademark being a well-known trademark and that the defendant is using its mark as a trademark, service mark, trading style and domain name.

The court ruled in favour of the plaintiff vis-à-vis infringement and passing off against the use of label marks and domain names and held prima facie opinion that the RPG trademarks of the plaintiff are well-known and should be protected. The court addressed issues stepwise:

  • Was there infringement and passing off of the plaintiff’s mark?

In order to establish infringement under Section 29(4) of the Act, these main factors need to be satisfied- if the mark is identical/similar to the registered trademark; if it is being used in relation to the goods/services which are different from which registration has been granted; and if the registered mark has a reputation in India and use of the impugned mark is without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.

The defendant argued that to rely upon Section 29(4) of the Act, the plaintiff’s trademark is to be recorded in the list of the well-known trademarks as published by Trade Marks Registry. However, the court rejected this proposition and held that at the interim stage, there is no requirement to prove that the plaintiff's mark is recorded in the list of well-known trademarks. It was ruled that defendant’s use of impugned labels amounted to infringement. The court differentiated between “marks with a reputation” and “well-known marks” and observed that to establish the infringement of a registered trademark, the mark doesn’t need to be recorded in the list of well-known trademarks. For proving infringement under Section 29(4) of the Act, the mark should have a reputation and not necessarily be a well-known trademark.

In order to establish passing off, three ingredients must be satisfied:

  • Goodwill and reputation of the plaintiff’s mark
  • Actual or likelihood of deception or confusion caused amongst the public
  • Likelihood or actual injury to the plaintiff by such use.

The court observed that the requirement of a 'common field of activity' is no more a requirement to succeed in an action for passing off and the defendant’s misrepresentation will damage the plaintiff. The court held that all factors were satisfied and an adequate case of passing off against the defendant.

  • Was there infringement by defendant’s trade name?

The defendant’s reliance on Section 29(5) of the Act was upheld as the plaintiff could not satisfy its pre-requisites of relevant provision- use of the registered trademark as a trade name for the same/identical goods and services for which the trademark has been registered. Thus, the defendant’s trade names 'RPG Pharmacy' and 'RPG Opticals' did not amount to infringement.

This decision supports the proposition that reputation supported by documentary evidence can be relied upon to claim infringement of a registered trademark against dissimilar goods and services under Section 29(4) of the Act which does not enlist declaration of a registered trademark as a well-known trademark as one of the key ingredients. Having said that, the declaration of a trademark as a well-known mark strengthens the claims of reputation.

About the Firm

LexOrbis
Address 709-710 Tolstoy House, 15-17 Tolstoy Marg, New Delhi – 110001
Tel 91-11-2371 6565
Fax 91-11-2371 6556
Email manisha@lexorbis.com
Link www.lexorbis.com

Related Articles

22
OCT
2022
No Exclusivity over INNs – Delhi High Court Denies Injunctive Relief to Sun Pharma
22
OCT
2022
International Non-proprietary Names (INNs) are considered as generic names for pharmaceutical substa...

Read More

03
SEP
2022
Polymorphs Patentability : Looking Though Judicial Lens
03
SEP
2022
Story of exitance of polymorphism dates back to the year 1812 when Napoleon Bonaparte army wore h...

Read More

08
AUG
2022
Amendment of Product by Process Claim to a Process Complies Section 59(1)
08
AUG
2022
A recent judgement in matter of Nippon A&L Inc. V. The Controller of Patents dated 5th July 2022 ...

Read More

31
JUL
2022
Fraud in Obtaining Patent and Revocation
31
JUL
2022
Patent rights are statutory right created under the terms and conditions of the national patent l...

Read More

22
APR
2022
The Biological Diversity (Amendment) Bill, 2021
22
APR
2022
The Biological Diversity Act, 2002 was enacted for the conservation of biological diversity, sust...

Read More

25
MAR
2022
Rules on Intellectual Property Matters Notified by High Court of Delhi
25
MAR
2022
In a much-awaited development, the Delhi High Court has notified the “High Court of Delhi Rule...

Read More

07
MAR
2022
Competitor’s Dishonest Intention in Using Similar Word Can Be Injuncted
07
MAR
2022
Recently, the Delhi High Court granted an interim injunction against the defendant until disposal of...

Read More

17
JAN
2022
Supreme Court of India Further Extended the Suspension of Limitation Period/Timelines under General and Special Laws
17
JAN
2022
In view of the spike in new cases of Covid-19, the Hon’ble Supreme Court of India has on...

Read More

08
DEC
2021
Non-speaking Refusal Order Quashed by the Bombay High Court
08
DEC
2021
The Bombay High Court, through an order dated 6th October 2021 in the case of Metso Outotec Corpo...

Read More

29
NOV
2021
Note on the Cryptocurrency and Regulation of Official Digital Currency Bill, 2021
29
NOV
2021
The Cryptocurrency and Regulation of Official Digital Currency Bill, 2021, will be introduc...

Read More

29
NOV
2021
Note on Joint Parliamentary Committee’s Report on the Personal Data Protection Bill, 2019
29
NOV
2021
The Personal Data Protection Bill, 2019 was introduced in the Lower House of the Indian Parliamen...

Read More

11
OCT
2021
Delhi High Court Proposes to Frame Intellectual Property Division (IPD) Rules, 2021
11
OCT
2021
In July, 2021, the Hon’ble Chief Justice of Delhi High Court announced creation of Intellectua...

Read More

04
OCT
2021
Suspension of Limitation Period Due to COVID-19 Withdrawn
04
OCT
2021
On September 23, 2021, the Supreme Court withdrew the suspension of limitation that was in place sin...

Read More

03
AUG
2021
Surrender of a Patent Cause and Effect
03
AUG
2021
Voluntary surrender of a patent and its revocation in a court are two distinct actions through which...

Read More

13
JUL
2021
No Grant of Anti-Suit Injunction if Foreign Proceedings Not Oppressive or Vexatious: Delhi HC
13
JUL
2021
When proceedings are pending in a foreign court against an Indian citizen, such a person can requ...

Read More

16
JUN
2021
Pre-grant Order Appealable: IPAB Precedents Lost?
16
JUN
2021
Judiciously speaking precedential value of every decision of a higher court is high for deciding ...

Read More

26
MAY
2021
Court Recognizes The Seriousness of Medicinal Trademarks
26
MAY
2021
Recently, the Delhi High Court decided the case of Mankind Pharma Limited vs Novakind Bio Sciences P...

Read More

08
APR
2021
Can a Prefix Conceal Infringement?
08
APR
2021
The factor of distinctiveness of a trademark plays a vital role in deciding infringement suits. W...

Read More

07
APR
2021
Intellectual Property Appellate Board Abolished by Way of An Ordinance
07
APR
2021
The Central Government by way of an Ordinance, namely the Tribunals Reforms (Rationalization and Con...

Read More

14
MAR
2021
Claiming Royalty Fee After Delay Cannot Be Sustained
14
MAR
2021
The High Court of Delhi in the case of Ozone Spa Pvt Ltd vs Jyotsna Sanjay Aggarwal & Anr. delibe...

Read More

12
MAR
2021
Extension of Limitation under COVID-19 Comes to an End_Supreme Court Order Dated March 8, 2021
12
MAR
2021
In view of the outbreak of COVID-19 pandemic in March 2020, the Supreme Court of India by an order d...

Read More

07
FEB
2021
‘Knowledge Workers’ and Trade Secret!
07
FEB
2021
Knowledge drives the companies to gain competitive edge over the similarly placed companies in the m...

Read More

21
DEC
2020
Trademark Used Only for Exports Can be Protected
21
DEC
2020
Recently, the Delhi High Court heard a plea for granting an interim injunction in favour of UFO Cont...

Read More

21
DEC
2020
SMEs and Standard Essential Patents (SEPs)
21
DEC
2020
Basics of SEPs A technical standard is a formal document that establishes uniform engineering or te...

Read More

21
OCT
2020
Significant Achievements Witnessed by The IP Office (2014-15 to 2019-20)
21
OCT
2020
National IPR Policy unveiled in the year 2016 has brought out such remarkable changes in the IP. Ad...

Read More

  • 1
  • 2