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2013 DAILYLAW 2690 (DEL)

Malhotra Book Depot v. MBD Electronics Pvt. Ltd.

2013-07-24

Mukta Gupta

body2013
JUDGMENT : Mukta Gupta, J. I.A. No. 8430/2011 (by Plaintiffs u/Order XXXIX Rule 1 and 2 r/w Section 151 CPC) 1. By this application the Plaintiffs seek injunction against the Defendant and its assignees, franchisees, licensees etc. restraining them from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods and services under the infringing mark/trading name containing the mark ‘MBD” or any other trademark identical or deceptively similar as the same amounts to infringement of the trademark registered in the name of the Plaintiffs. 2. Learned counsel for the Plaintiffs contends that ‘MBD” is a housemark of the Plaintiffs which was adopted in the year 1956. Since 1977 the Plaintiffs are the registered owners of ‘MBD” in Class 16 and thereafter have got the registration of this mark in 20 other classes and have applied for 250 other products and services. The Defendant adopted a deceptively similar trade mark being ‘MBD Electronics” though it is not dealing in electronics goods and is only trading in shares. As held in Kaviraj Pandit Durga Dutt vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980 and Ruston and Hornsby vs. The Zamindara Engineering Company, 1969 (2) SCC 727 once the Plaintiff is able to establish that the essential features of the Plaintiff’s trademark have been adopted by the Defendant no further evidence is required to be established that the Plaintiff’s right has been violated and thus the Defendant is liable to be injuncted on this ground itself. 3. It is further argued that the Defendant in the written statement has replied that it is not doing any business of manufacturing any goods and articles and the Defendant is doing the business of trading in shares in the name of its company ‘MBD Electronics Pvt. Ltd.” since incorporation in 1986. It is thus the defence of the Defendant that the Plaintiffs have filed the suit belatedly and are thus not entitled to the reliefs claimed much less the interim relief. Relying on Sections 29(4) and 29(5) of the Trademark Act and the decision in Larsen and Toubro Ltd. vs. Lachmi Narain Trades and others, 2008 (36) PTC 223 (Del.) (DB), Kirloskar Diesel Recon. Vs. Relying on Sections 29(4) and 29(5) of the Trademark Act and the decision in Larsen and Toubro Ltd. vs. Lachmi Narain Trades and others, 2008 (36) PTC 223 (Del.) (DB), Kirloskar Diesel Recon. Vs. Kirolskar Proprietary Ltd., 1997 (17) PTC 469 it is contended that the facts that the goods and services offered by the Defendant are different from those offered by the Plaintiff is no defence to a claim of infringement since the ‘Common Field Activity Test” is no longer valid. Furthermore the delay in bringing an action of infringing the trademark is not sufficient to defeat the purpose of grant of injunction. Reference is made to Midas Hygiene Industries (P) Ltd. and another vs. Sudhir Bhatia and others, 2004 (3) SCC 90 . Relying on Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73 it is contended that the similarities between the competing marks, rather than the dissimilarities have to be seen while adjudging deceptive similarity. 4. Learned counsel for the Defendant contends that the suit of the Plaintiff is liable to be dismissed as the Plaintiffs are not even aware of the constitution of the Defendant as stated in Para-20 of the plaint and thus it is not a properly instituted suit. The Defendant is user of trademark since 1986 and nobody has objected or had no grievance in the company’s name since the last 25 years. Thus the defendant is also the concurrent user of the trademark. Reliance is placed on London Rubber Co. Ltd. vs. Durex Products Incorporated and another, AIR 1963 SC 1882 and Gopal Hossiery vs. The Deputy Registrar of Trade marks and others, AIR 1981 Calcutta 53. 5. I have heard learned counsel for the parties. 6. The Plaintiffs are the owner of the trademark ‘MBD” and hold as many as 20 registrations as is evident from the record. The main claim of the Defendant is that he is a concurrent user and has been using this trademark since 1986. However a perusal of the documents filed by the Defendant shows that balance sheets of only last three years have been filed and no evidence relating to the user since 1986 has been placed on record. In London Rubber Co. However a perusal of the documents filed by the Defendant shows that balance sheets of only last three years have been filed and no evidence relating to the user since 1986 has been placed on record. In London Rubber Co. Ltd. (supra) the Hon’ble Supreme Court was dealing with the case of registration of a trademark and thus held that while considering the aspect of concurrent use the volume of use should be ascertained keeping in mind the capacity of the applicant to market his goods and whether the use was commercial or of other kind. It is not the case of the Defendant that it is the holder of a registered trademark ‘MBD” or that it has applied for the same. Even in Gopal Hosiery (supra) the issue was regarding registration of the trademark identical with one already registered by another proprietor. As regards the delay in bringing the action of infringement of trademark is concerned, in Midas Hygiene Industries (supra) their Lordships clearly held that in case of infringement either of a trademark or of copyright, mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. 7. The case of the Defendant is that it is not selling any goods or trading in actives similar to the Plaintiffs. In Larsen and Toubro (supra) it was held that the question is one of real likelihood of confusion or deception among the consumers and the resultant damages to the Plaintiffs. In cases where the trading name becomes a house hold name, under which trading name variety of activities are undertaken, even an action for passing off exclusively lies if the Defendant adopts identical or similar trademarks, even when the Defendant does not carry on similar activities. A perusal of the plaint shows that the Plaintiffs have adopted ‘MBD” in most of the group markets and has achieved a housemark as the same prominently features in trade journals, periodicals magazines, cyber space with domain names having the house mark ‘MBD’ etc. 8. In the facts and circumstances of the case it can be safely held that the Plaintiffs have made out a prima facie case, the balance of convenience also lies in their favour and in case interim injunction is not granted they would suffer irreparable lose. 8. In the facts and circumstances of the case it can be safely held that the Plaintiffs have made out a prima facie case, the balance of convenience also lies in their favour and in case interim injunction is not granted they would suffer irreparable lose. Thus the Defendant, its agents, servants, employees, assignees, attorney and representatives are restrained from selling, offering for sale, advertising, directly or indirectly dealing in identical or similar goods/services under the infringing mark/trading name containing the mark ‘MBD” or any other trademark/trading name as may be identical to or deceptively similar with or containing the trademark ‘MBD” or any of the composite marks of the Plaintiffs containing the mark ‘MBD” amounting to infringement of trademark registered in the name of the Plaintiffs. The application is disposed of.