The Bombay High Court allowed an application to temporarily restrain Mumbai Khadi and Village Industries Association from using its trademark “Khadi” and “Charkha” logos to sell its products. The Court prima facie found that the defendant is deceptively using the trademark already registered in favor of the plaintiff.
Brief Facts:
The plaintiff, a statutory Commission, had applied for interim reliefs in the context of its registered trademark ‘KHADI’ and its variants. The plaintiff had placed on record the details of various registrations about the trademark ‘KHADI’, which include word mark, device mark, and label mark, in multiple classes. The plaintiff alleged that by using the impugned marks, the defendant had indulged in infringement and passing-off. Therefore, the plaintiff prayed for interim relief regarding both the causes of action.
Contentions of the Applicant:
The learned Counsel submitted that the registration of various trademarks of the plaintiff dates back to the year 2014 onwards and that the user dates back to September 1956. He added that the defendant has been using the impugned marks consisting of the word ‘KHADI’ and the depiction of ‘Charkha’ logo in conjunction with its name, which infringes the word mark, label mark, and device mark registered in favour of the plaintiff. These actions of the defendant not only infringed the plaintiff's registered trademarks, but the adoption of the impugned mark was dishonest and in the teeth of the solemn undertaking given to this Court in the Suit (L) No.16451 of 2021. He emphasized upon Section 29 of the Trademarks Act, 1999, to contend that when a person, not being a registered proprietor, uses a mark as part of its corporate name, it amounts to infringement of the registered trademark.
Contentions of the Respondent:
It was contended by the learned Counsel of the Respondent that the claims made by the plaintiff were all of no consequence, for the reason that the defendant had placed on record sufficient material in the form of annual reports etc. to show the prior user of the word ‘KHADI’ on behalf of the defendant from the year 1946. It was submitted that even if the registration certificates issued in favour of the plaintiff recorded user since September, 1956, the material on record indicated that the defendant was a prior user and hence protected under Section 34 of the Trademarks Act.
Observation of the Court
This Court, after the perusal of the affidavit, noted that earlier defendant represented that it was not selling any product called, labeled or described as ‘KHADI’, and it agreed not to sell any ‘KHADI’ product without a certificate from the plaintiff.
The Court observed that “if the present suit is purely based on the cause of action of infringement and passing-off pertaining to the registered trademark of the plaintiff, it has to be appreciated in the backdrop of the defendant itself having sought certification for selling ‘KHADI’ products and later having suffered suspension and withdrawal of the certificate”. This Court concurred with the submissions of the plaintiff. It opined that in such circumstances, prima facie, the plaintiff has made out a strong case in its favour for the protection of its proprietary rights as regards the registered trademark, and the defendant cannot avoid interim injunction by relying upon Section 34 of the Trademarks Act.
The decision of the Court:
The Bombay High Court allowed the application for temporarily restraining the defendant from using the word “Khadi” from its corporate name.
Case Title: Khadi & Village Industries Commission vs Board of Trustees, Mumbai Khadi and another
Coram: Hon’ble Justice Manish Pitale
Case no.: COMMERCIAL IP SUIT (L) NO.14302 OF 2022
Advocate for the Applicant: Dr. Birendra Saraf
Advocate for the Respondent: Mr. Venkatesh Dhond
Read Judgment ;
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