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2014 (1) TMI 1217 - HC - Companies LawTrademark infringement - Use of plaintiff's registered trademark 'REAL' - Whether an action for infringement is made out by the Plaintiff, prima facie - Held that:- Plaintiff has applied for rectification of the mark of Defendant No.1 and the proceedings arising therefrom is pending before the Intellectual Property Appellate Board (ÍPAB’). Therefore, it is possible for the Plaintiff to contend that the question whether Section 28 (3) of the TM Act precludes the Plaintiff from seeking to restrain Defendant No.1 from infringing its mark will have to await the decision of the IPAB on the Plaintiff’s challenge to the validity of the registration in favour of Defendant No.1. That stage is yet to be reached. Therefore, the fact that Defendant No.1 is a registered proprietor of an identical mark in the same class cannot preclude the Plaintiff from seeking to restrain Defendant No.1 from using the mark ‘REAL.’ Therefore, it is not using the whole mark for which it has registration, but only a part of it. Also, Defendant No.1 has recently changed the writing style of the word ‘REAL’ on the label of its products thus bringing it closer to the Plaintiff’s manner of writing ‘REAL’. The defence under Section 28 (3) of the TM Act would be available only if Defendant No.1 was using the entire mark for which it holds registration and not only a part of it - The invoices and other material produced by the Plaintiff show prima facie that it has been extensively marketing its ‘REAL’ juices throughout India for several years. The volume of sales is considerably higher than the products of Defendant No.1 in the State of Goa. The Plaintiff has been prima facie able to show that its products sold under the REAL label enjoy reputation and goodwill. Permitting Defendant No.1 to use the mark ‘REAL’ at this stage outside Goa will adversely impact the distinctiveness, reputation and goodwill enjoyed and will dilute the mark ‘REAL’ registered in favour of the Plaintiff. In terms of Section 29(2) read with Section 29(3) of the TM Act, identical marks in relation to cognate and allied goods, and in this case, similar goods, viz., Soda, aerated drinks and fruit juices of Defendant No.1 and fruit juices of the Plaintiff, are bound to cause confusion in the mind of a consumer of average intelligence. The manner of writing ‘REAL’ by Defendant No.1 brings it closer to the Plaintiff’s mark. It is clearly different from the style in which “REAL’ is written in the marks REAL MANIK and REAL SODA for which Defendant No.1 holds a registration. There is no satisfactory explanation as to why it chose to do so. In the circumstances, there is prima facie merit in the contention of the Plaintiff that the adoption of the aforementioned manner of writing ‘REAL’ by Defendant No.1 cannot be said to be honest - Decided in favour of Petitioner.
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