Trade mark – Passing Off action because of similarity – Both the offending and legitimate mark being used for footwear. Therefore in the present suit inter alia justice demands to restrain the Defendant from passing off its goods (footwear) as that of the Plaintiff by adopting the mark ‘VKG’, claiming the same to be deceptively similar to the Plaintiffs mark ‘VKC’.

MANU/DE/0767/2018 = MIPR 2018 (1) SNC15

IN THE HIGH COURT OF DELHI

Veekesy Rubber Industries Pvt. Ltd

VS

Deepak Gupta

 

CS (COMM.) 49/2017 AND IA NO. 885/2017

DECIDED ON: 12.02.2018

Hon’ble Judges/Coram:

Rajiv Sahai Endlaw, J.

Counsels:

For Appellant/Petitioner/Plain tiff: Sheetal Vohra, Sridharan R. Ram Kumar and

Vaibhav Nautiyal, Advs.

 

For Respondents/Defendant: Jithin M. George, Adv.

 

Trade mark – Passing Off action because of similarity – Both the offending and legitimate mark being used for footwear. Therefore in the present suit inter alia justice demands to restrain the Defendant from passing off its goods (footwear) as that of the Plaintiff by adopting the mark ‘VKG’, claiming the same to be deceptively similar to the Plaintiffs mark ‘VKC’.

Held, agree with the counsel for the plaintiff that the manner in which the subject goods are generally sold and displayed in shops dealing with the same, the difference if any in the cartons in which the goods may be sold or packed will not in any way come in the way of deception otherwise likely between the two marks. On perusal of the products shown in the Court, it is also found that the manner in which the defendant is using its mark is identical to that in which the plaintiff is using its mark i.e. in a rectangle of the same size and with the alphabets having the same font. It is also quite common to describe footwear of different kinds by using the mark describing the kind of footwear in conjunction with the mark applicable to all the goods from a particular source. It is thus felt that use by the plaintiff of the subject mark in conjunction with another mark and use by the defendant of its mark with the mark „PU‟ will also not alleviate the deception and confusion otherwise likely between the two marks. Merely because the name of father of the defendant is V.K. Gupta, the adoption by the defendant of mark „VKG‟ cannot be said to be bona fide. The defendant, if desirous of using the name of his father as a trade mark, can use the same in any other manner.

 

HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW

ORDER

12.02.2018

  1. The plaintiff has instituted this suit inter alia to restrain the defendant from passing off its goods as that of the plaintiff by adopting the mark „VKG‟, claiming the same to be deceptively similar to the plaintiff‟s mark „VKC‟, both in respect of footwear.
  2. The suit was entertained but in view of the fact that the mark of the defendant was also registered and the plaintiff had already moved the Intellectual Property Appellate Board (IPAB) for removal of the defendant‟s mark from the Register, no ex parte order granted.
  3. The defendant has contested the suit by filing written statement and to which a replication has been filed by the plaintiff.
  4. The suit is ripe for framing of issues and for hearing the application for interim relief.
  5. Mr. Jithin M. George, Advocate appearing for the defendant states that Mr. Miglani, Advocate for the defendant is busy before the Court Commissioner in another case where Mr. Miglani‟s witness is being cross- examined and seeks passover.
  6. Anyone seeing the cause list of this Court would know that the matter, if passed over, would not reach. The defendant, in this manner cannot be permitted to deprive the plaintiff of hearing of its application for interim relief especially when the plaintiff has no interim relief in its favour till now.
  7. The counsel for the plaintiff has been heard.
  8. The counsel for the plaintiff has argued (i) that the mark of the plaintiff as well as the defendant are with respect to polyurethane footwear;

(ii) that the plaintiff claims user since 1st May, 1983 and applied for registration of the word mark „VKC‟ on 4th October, 1985 and registration was granted on 2nd July, 2007 and the plaintiff is till now continuing to use the said mark in relation to the subject goods; (iii) that the defendant applied for registration of the word mark „VKG‟ on 21st January, 2011 on “proposed to be used basis” and the registration in favour of the defendant was granted on 26th September, 2012; (iv) that the defendant claims user since the year 2012, without giving any specific date; (v) that while certificate of registration in favour of the plaintiff is at page 64 of the Part-III Volume-I file, the certificate of registration in favour of the defendant is at pages 63, 238 of the said file; (vi) that the plaintiff has spent considerable amounts in developing the said mark including on advertising with the cricketer Rohit Sharma, film stars Ajay Devgan and Kajal Aggarwal being the brand ambassadors of the plaintiff and the plaintiff has also filed the documents to show monies having been spent on advertising on television channels; and,

(vii) that while the goods of the plaintiff sell for Rs.350/-, the goods of the defendant sell for Rs.199/- and the defendant by so adopting the deceptively similar mark and selling the goods at a price lower than that of the plaintiff is effecting the market of the plaintiff. The products of the plaintiffs and thedefendant are shown in the Court.

  1. It is found from the products handed over in the Court that the plaintiff is using the mark „VKC‟ along with the word „PRIDE‟ and the defendant is using the mark „VKG‟ along with mark „PU‟.
  2. The counsel for the plaintiff on enquiry states that the mark „PRIDE‟ represents one class of goods being sold by the plaintiff under the mark „VKC‟ and the plaintiff has other marks also with respect to other classes of goods viz. „LITE‟, „PRIDE‟, „STILE‟, „TRENDS‟, „JUNIOR‟ etc.
  3. It is further contended by the counsel for the plaintiff, (a) that the defendant, in its written statement has claimed having adopted the mark „VKG‟ for the reason of the name of his father being V.K. Gupta; (b) that the only defences of the defendant taken in the written statement are of delay, others also using the words „VK‟ with respect to the same goods; and,

(c) there being a difference between the carton in which the goods are retailed, of the plaintiff and that of the defendant.

  1. As far as the aspect of delay is concerned, as aforesaid, the registration of the defendant‟s mark is of 2011-2012 and user by the defendant is of 2012 and the plaintiff instituted the suit as soon as it found the goods of the defendant in the market. It is highly unlikely that a product immediately on launch would be known to all others in the same trade, unless shown to be heavily advertised and which is not the case here.
  2. Though the defendant has taken a defence of user of the mark by others but no documents of use of the mark with „VK‟ by others in relation to the same goods have been filed.
  3. As far as the defence of dissimilarity in cartons is concerned, considering the way subject product is sold and the comparatively low price thereof, the differences in the carton are immaterial and do not come in the way of confusion otherwise evident between the two marks.
  4. Though Mr. Jithin M. George, Advocate has sought passover but I have yet again asked him whether he wants to argue.
  5. He has chosen not to argue and reiterates the same request.
  6. However, when the aforesaid part order was being dictated, he interrupted to say that the defendant has also taken another defence of the defendant having adopted the mark „VKG‟ on the basis of his father‟s name.
  7. If Mr. Jithin M. George was listening attentively, he would have known the said submission has already been recorded above.
  8. The counsel for the plaintiff, on being asked to show judgments on alphabet word marks, has drawn attention to, (a) MRF Limited Vs. N.R. Faridabad Rubbers MANU/DE/0767/1998 where, on finding adoption by the defendant therein of „NRF‟ with respect to the same goods for which the plaintiff was using the mark „MRF‟, temporary injunction restraining passing off was granted and the defence of the defendant‟s mark being accompanied by Swastika logo and the plaintiff‟s mark being accompanied with the logo of a muscleman lifting the tyre was held to be not relevant for the purposes of grant of interim injunction; and, (b) Aktiebolaget SKF Vs. Rajesh Engineering Corporation MANU/DE/1312/1996 where the order of the Deputy Registrar, Trade Marks of dismissal of the opposition to registration of the mark „SKI‟ in relation to the same goods qua which the plaintiff therein had registration of the mark „SKF‟ was set aside and it was held that since both trade marks covered goods of the same description, there was likelihood of deception and confusion.
  9. I have considered the aforesaid contentions and agree with the counsel for the plaintiff that the manner in which the subject goods are generally sold and displayed in shops dealing with the same, the difference if any in the cartons in which the goods may be sold or packed will not in any way come in the way of deception otherwise likely between the two marks. On perusal of the products shown in the Court, it is also found that the manner in which the defendant is using its mark is identical to that in which the plaintiff is using its mark i.e. in a rectangle of the same size and with the alphabets having the same font. It is also quite common to describe footwear of different kinds by using the mark describing the kind of footwear in conjunction with the mark applicable to all the goods from a particular source. It is thus felt that use by the plaintiff of the subject mark in conjunction with another mark and use by the defendant of its mark with the mark „PU‟ will also not alleviate the deception and confusion otherwise likely between the two marks. Merely because the name of father of the defendant is V.K. Gupta, the adoption by the defendant of mark „VKG‟ cannot be said to be bona fide. The defendant, if desirous of using the name of his father as a trade mark, can use the same in any other manner.
  10. Needless to state, that if the defendant, during the pendency of the suit, continues to use the impugned mark, the plaintiff will suffer irreparable injury and the mark of the plaintiff may be affected for long and for which the plaintiff cannot be compensated in money. Balance of convenience is also found in favour of the plaintiff considering the time for which the plaintiff and the defendant are using the mark.
  11. IA No.885/2017 is thus allowed.
  12. The defendant, during the pendency of the suit, is restrained from using the mark „VKG‟ or any other mark similar or deceptively similar to the plaintiff‟s mark „VKC‟ in relation to footwear.
  13. The Registrar of domain name www.vkgpu.com is also directed to immediately, on receipt of communication from the plaintiff suspend the same till further orders.
  14. IA No. 885/2017 is disposed of.
  15. The counsel for the plaintiff has handed over proposed issues.
  16. Mr. Jithin M. George, Advocate, on again being asked whether he has any issues to propose, states he has none.
  17. On the pleadings of the parties, the following issues are framed:-

(i) Whether use by the defendant of the mark „VKG‟ amounts to the defendant passing off its goods as that of the plaintiff under the mark „VKC‟? OPP

(ii) Whether the defendant is entitled to use the mark „VKC‟ for the reason of his father‟s name being V.K. Gupta? OPD

(iii) If the above issues are decided in favour of the plaintiff, to what relief is the plaintiff entitled and if the plaintiff is found entitled to any damages, then in what amount? OPP

(iv) Relief.

  1. No other issue arises or is pressed.
  2. The parties to file their list of witnesses within 15 days.
  3. The plaintiff to file affidavits by way of examination-in-chief of its witnesses within six weeks.
  4. Option of having evidence recorded on commission has been accepted by the counsel for the plaintiff.
  5. Mr. B.B. Choudhary, ADJ(Retd.), Ph. No. 9910384611 is appointed as a Court Commissioner to record the evidence in the case. The fee of the Court Commissioner is fixed at Rs.1,00,000/- besides out of pocket expenses to be borne initially by the plaintiff and subject to final order if any as to costs of the proceedings.
  6. The recording of the evidence to be completed within six months from the date of first appearance before the Court Commissioner. The parties to appear before the Commissioner, after prior appointment, for fixing the dates of trial, within six weeks of today. The Commissioner is granted liberty to have the matter placed before the Court, if any of the parties are found delaying recording of the evidence.
  7. The Court Commissioner is requested to record the evidence within the Court Complex. The Registry is directed to send the file of the suit at the place and time fixed by the Court Commissioner for recording of evidence.
  8. To be listed after recording of evidence is completed.

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