TMI Blog2013 (8) TMI 352X X X X Extracts X X X X X X X X Extracts X X X X ..... gent powder and soaps under the name FENA – They also hold valid trade mark with respect to Class 3 goods in India - Meanwhile, the defendant also holds worldwide - reputation in the petrochemical market and enjoys trans-border reputation in the relevant market –, the defendants goods primarily belong to Class 4 of the Classification of Goods and Services under the Trade Mark Act. Territorial Jurisdiction - Whether this Court has jurisdiction to entertain and try the present suit - Held that:- The issue was in favor of the plaintiff - The plaintiff had placed on record the invoice for purchase of the goods bearing the impugned trade mark - By virtue of the admission and in accordance with Sec. 58 of the Indian Evidence Act, 1872, the plaintiff was not required to prove any further - the sale of goods carrying the trade mark within the territorial limits of the Court’s jurisdiction Damages - Permanent Injunction - Whether the plaintiff was entitled to rendition of accounts, profits and/or damages, if so, how much - Held that:- The plaintiff was entitled to a permanent injunction restraining the defendants from using the impugned trade mark FINA’ with respect to goods and servi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed to allow the opposition of the plaintiff and dismissed the Trade Mark No. 443079 of the defendant no. 1 for registration of the trade mark FINA under Class 3. An appeal was preferred by the defendant no.1 against the said Order before the Calcutta High Court, being Appeal No. 274 of 1999; which was pending hearing at the time of filing of the suit. However, the appeal was subsequently withdrawn by the defendant no. 1 on June 6, 2007. 4. The plaintiff submits that it received a letter dated November 5, 1999 from the Advocates of defendant no. 1 wherein an objection was raised regarding the use of the trade mark FENA by the plaintiff, on the ground that the plaintiff and the defendant are dealing in the same or allied category of items and that the trademarks FENA and FINA are deceptively similar. Further, on December 20, 1999, the plaintiff s attorneys at Kolkata were served with suit papers by the defendant s attorneys in respect of a suit that had been filed by the defendant against the plaintiff pursuant to the legal notice dated November 5, 1999, praying for an interim injunction. The said suit was dismissed by the Calcutta High Court vide Order dated June 15, 2012 for non ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... no. 1 is the prior user of the trademark FINA in relation to petroleum products adopted internationally since the year 1920, and that the instant suit is not maintainable under Sec. 33 of the Trade and Merchandise Mark Act, 1958. The defendants also submit that the suit is not maintainable under Secs. 28 and 30 of the Trade and Merchandise Mark Act, 1958 because defendant no. 1 is the registered proprietor of the trademark FINA registered under No. 443075 dated September 18, 1985. 9. The Court framed the following issues for trial vide Order dated September 14, 2005: 1. Whether the plaintiff is the proprietor of the trademark FENA , if so, to what effect? OPP 2. Whether the user of trade mark/ trade name FINA by the defendant in relation to toiletries, cosmetic, detergents, cleaning and polishing preparations, lubricants or any other goods under the trade mark FINA is likely to cause confusion or deception amounting to passing off? OPP 3. Whether the defendant is prior user of the trade mark FINA and is the registered proprietor in India of the said trade mark, if so, to what effect? OPD 4. Whether the plaintiff is entitled to rendition of accounts, profits and/or d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... od 1976-2003 have been annexed as Ex-P3, which has also been proven by PW-1 in his affidavit dated 25 October 2005. Further, the Registrar of Trade Marks vide its Order dated March 4, 1997 has held that the plaintiff is the proprietor of the mark FENA. In the said Order, the Ld. Registrar decided a Notice of Opposition filed by the plaintiff herein against the defendant s application for registration of the word FINA in Class 3 goods, under the Application No. 443079 dated September 18, 1985. And the mark was proposed to be used on the date of application. In deciding the said Notice of Opposition, the Ld. Registrar has decided issues, inter se the same parties, similar to the one framed in this instant suit. His findings are therefore pertinent to determine the outcome of the issues framed in the instant suit. 15. In the proceedings before the Ld. Registrar, the defendants herein have submitted that they are carrying on an international business as manufacturers and merchants inter alia of chemical preparations, soaps, detergents etc. and are the legitimate and bona fide proprietors of the trade mark FINA , which is registered in many countries including the UK and that the w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... onsideration of the evidence of use and reputation enjoyed by the opponents in their prior registered mark is evidently likely to cause deception and confusion during the course of trade and therefore mandatorily prohibited for registration under Sec. 11(e) of the Act. 16. In prior cases, this Court has recognized the judicial comity of the Registrar of Trade Marks. In the case of Hindustan Lever Ltd. v. Rameshwar Mundia Anr. 2009 (39) PTC 570 (Del.) (DB), this Court took cognizance of the decision of the Ld. Registrar to determine the deceptive similarity between two products. The Court held: We do not intend to decide this issue on the process of reasoning adopted by the Copyright Board for the reason we are satisfied that on the principle of comity, the Copyright Board ought to have given due respect and weightage to a prior order passed by the Statutory Authority namely, the Registrar of Trademarks. The principle of comity is well recognized in law, whereunder different statutory authorities and courts give due respect to the opinion rendered by each other. Only when the decision or an opinion of a Court or a statutory authority is contrary to law, public policy or ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... has relied upon the decision of the Apex Court in Mahendra Mahendra Paper Mills Ltd. v. Mahindra Mahindra Ltd. (2002) 2 SCC 147, as well as the decision of this court in the case of Larsen Toubro Limited v. Lachmi Narain Traders Ors. 2009 (36) PTC 223 (Del.) (DB). 20. Upon careful reading of the L T Case (supra), it is seen that the injunction was granted purely on the basis of the facts and circumstances of the case concerned. The Court held:- In the light of the findings of fact recorded by the learned Single Judge which are, in our opinion, perfectly justified in the facts and circumstances of the case, there was no justification for allowing the defendants-respondents herein to use the very same trademark/logo with or without the extended full form of the abbreviation Lachmi Narain Trades. If use of 'LNT/ELENTE' was not permissible for the reasons given by the Single Judge with which we agree, its user could not become permissible simply because the defendants were using the offending logo/trademark with some other expression like Lachmi Narain Trades in the present case. Inasmuch as the learned Single Judge permitted user of the offending expression LNT/EL ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inion that outside of Class 3 goods and services, there are no factors of confusion, as observed in the Mahendra Mahendra Case (supra), existing between the businesses of the rival parties. The market, trade channels, course of trade and most importantly, the class customers of either parties are entirely different, and hence there can be no concern of confusion with regard to goods and services of the plaintiff outside of Class 3. Therefore, Issues 1 and 2 are decided in favour of the plaintiff only to the extent of Class 3 goods and services, and against the plaintiff with regards to goods and services outside Class 3. 24. Issue 3: It is seen that the defendant has made contradictory claims regarding its prior use of the impugned trade mark FINA . In paragraph 5 of the Written Statement, the defendants have taken the preliminary objection that the impugned trade mark is a world renowned trade mark which was being used by the defendant no. 1 since the year 1920. However, in its Reply on Merits with respect to paragraphs 16 to 20 of the Plaint, the defendants have stated that the trade mark FINA is a memorable and vital part of the defendant no. 1 company s corporate name a ..... X X X X Extracts X X X X X X X X Extracts X X X X
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