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Calcutta High Court · body

2012 DIGILAW 720 (CAL)

Khadim India Ltd. v. Bata India Ltd.

2012-08-02

I.P.MUKERJI

body2012
JUDGMENT 1. Both 'the plaintiff and the defendant are manufacturers of shoes. 2. This is an interim application brought in aid of the above suit, complaining of infringement of the trademark "Pro". 3. The facts are these. 4. The plaintiff has been manufacturing about 300 varieties of shoes using the above trademark. 5. They have been using the word mark "Pro" from 10th June 1997. This word mark was registered on 16th June 2005 with effect from 10th June 1997. They are also using a label mark comprising of this word mark "Pro" with a stylised design over it, from 13th October 2009. This label mark was registered on 16th March 2011. They also have a copyright of this mark obtained on 19th July, 2011. I may also add that beneath the word "Pro" are written the words "Speeding Style". 6. This mark is affixed inside the shoe at the place where the heel rests. The dispute arises between the parties in this way. 7. The defendant is the registered proprietor of an arrow mark. They manufacture a certain kind of sport shoes using the trade name "Power". What the defendant has done is that while affixing their trademark in the inside part of the shoe, they have also used the words "Pro Series". 8. The plaintiff complains that this is an outright infringement of their registered mark and that the Court should pass an order of injunction restraining the defendant to use this mark. 9. Now the submissions of the learned Counsel for the parties. 10. Mr. S. K. Kapur, learned Senior Counsel appearing for the plaintiff shows me section 28 of the Trademarks Act, 1999. He submits that being the registered proprietor of the mark "Pro" the plaintiff has the exclusive right to use the mark. Use of the mark is effected by affixation thereof in the inside part of the shoe as stated above. Therefore, that tantamounts to use of the mark under section 29(6) of the said Act. 11. He cites the well known case of Kaviran Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories reported in AIR 1965 SC 980 (paragraph 28). He submits that if the two marks are similar visually or phonetically then evidence of deception caused to the public need not be led. Infringement is established. 11. He cites the well known case of Kaviran Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories reported in AIR 1965 SC 980 (paragraph 28). He submits that if the two marks are similar visually or phonetically then evidence of deception caused to the public need not be led. Infringement is established. The Court should grant an injunction as a matter of right as held in the case of Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia & Others reported in (2004) 3 Supreme Court Cases 90. He also cited R. R. Proteins & Agro Ltd. vs. Hari Shankar Singhania & Anr. reported in 2010 (3) CHN (Cal) 912, a decision of our Court which followed both the Supreme Court decisions. 12. Now the submissions of Mr. Gautam Chakraborty, learned Senior Counsel for the defendant. 13. He submitted that the defendant was the owner of the well-known brand "Power". They are also the registered proprietor of the trademark represented by an inverted arrow. It is true that they are using the words "Pro Series" in the inside part of the shoes, but they are not using these words as a mark. If it was not being used as a mark the plaintiff had no right to claim injunction. He cited section 29 of the said Act and a passage from a book by Venkateswaran fifth edition 2010 page 1303 for this purpose. He showed me section 2(1)(zb) of the Trademarks Act, 1999 to submit that a trademark had to be capable of being represented graphically. 14. He also submitted that the expression "Pro" was a common English word. Furthermore, these shoes were only sold from the retail shops of Bata and were not available in the market. Therefore, a customer could not be deceived. 15. He also showed me that various organisations like Adidas, Chrome and Comfort were using the expression "Pro" in their marks. All these marks were registered. A bunch of documents was handed up to the Court as evidence of this. It was argued that since the mark had become very common, no Injunction should be granted. To this Mr. Kapur submitted that none of these manufacturers were marketing shoes in the market. 16. Now my prima facie findings: (a) I am unable to accept the contention of the defendant that the word "Pro Series" was not being used as a trademark. To this Mr. Kapur submitted that none of these manufacturers were marketing shoes in the market. 16. Now my prima facie findings: (a) I am unable to accept the contention of the defendant that the word "Pro Series" was not being used as a trademark. On my visual examination of the shoe produced for my view, the words "Pro Series" were written on the inside part of the shoe in the area where the heel rests. Even if the word "Power" had been used and the trademark arrow displayed on the shoe, in my opinion, all these marks "Power", arrow and "Pro Series" were intended to be used as trademarks under section 29 of the Trademarks Act, 1999. (b) There is no dispute that the plaintiff is the proprietor of the word mark "Pro" and the matching label mark as stated above. They also have copyright in the label, as stated above. (c) If such is the case it does not matter, in the absence of rectification of the trademarks register, whether the word "Pro" is of common use or that the shoes are sold only in retail shops of the defendant or that there are other manufacturers who are registered proprietors of the mark, a part of which is "Pro". I may add that in the documents shown to me the registered marks were prefixed by the word "Pro". "Pro" by itself is not the registered mark of any other person. (d) In the above 1965 Supreme Court case it was said that if two marks were similar and one of them was registered, the registered proprietor of the mark could bring an action to restrain the unregistered user of the mark from using the mark. Furthermore, if there was visual and phonetic similarity no further evidence was required. (e) In this case, the mark of the defendant is visually similar to the mark of the plaintiff and in my opinion no further evidence is required to establish the right of the plaintiff. Furthermore in the case of Midas (supra), it has been held by the Supreme Court that in such a situation injunction is a matter of course. 17. In that view of the matter, I pass an order in terms of prayer (a) of the notice of motion. Furthermore in the case of Midas (supra), it has been held by the Supreme Court that in such a situation injunction is a matter of course. 17. In that view of the matter, I pass an order in terms of prayer (a) of the notice of motion. I also pass an order in terms of prayer (f) of the Notice of Motion but confined to symbolic possession only. 18. The defendant will furnish to the Joint Receivers an inventory of the stock with the above trademark today and the stock on the date the inventory is furnished by them. The Joint Receivers will cross check the inventory, on a random basis. 19. However, the defendant will be entitled to sell the above products by obliterating the expression "Pro Series" from the shoes. In that event they will furnish a fresh inventory to the Joint Receivers of the entire stock of the subject shoes with regard to which this exercise has been done. The Joint Receivers will be at liberty to cross check as above and thereafter the defendant will be permitted to sell the changed product. 20. The Joint Receivers may engage a specialized agency for verifying the inventory furnished by the defendant, at the cost of the plaintiff. 21. Mr. Swarnendu Ghosh, Advocate of the Bar Library Club and Ms. Paramita Pal, Advocate of the Bar Association are appointed Joint Receivers at an initial remuneration of 2000 GMs and 1000 GMs respectively to be paid by the plaintiff. 22. The joint Receivers are to file a report by the adjourned date. Affidavit-in-opposition be filed by 21st August, 2012. List this application on 5lh September, 2012; affidavit-in-reply in the meantime. 23. Stay of operation of this order is prayed for by learned counsel for the defendant. Such prayer is considered and refused. 24. All parties concerned are to act on a signed photocopy of this order on the usual undertakings.