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Fena Limited Versus M/s Fina Europe SA and others

2013 (8) TMI 352 - DELHI HIGH COURT

Proprietor of Trademark – Passing off of Goods - Whether the plaintiff was the proprietor of the trademark FENA, if so to what effect - Whether the user of trade mark/ trade name FINAby the defendant in relation to toiletries, cosmetic, detergents, cleaning and polishing preparations, lubricants or any other goods under the trade mark FINA was likely to cause confusion or deception amounting to passing off – Held that:- There can be no concern of confusion with regard to goods and services of th .....

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entirely different - it was the admitted position that the plaintiff was a household name regarding detergent 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. - Terr .....

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ction - 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 services under Class 3 - The plaintiff had been able to establish that it enjoyed strong goodwill and reputation with respect to soaps and detergents within India - the plaintiff had not been a .....

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fs of permanent injunction restraining passing off and unfair competition, rendition of accounts and delivery up of all goods bearing the trade mark/trade name FINA. 2. The plaintiff, Fena Ltd. is a company registered under the Companies Act, 1956 having its office at New Delhi. The plaintiff s case is that it is engaged in the business of manufacturing and selling various consumer non-durables including detergent cakes & powder, cleaning preparation, etc. since 1976, of which, the detergent .....

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ork and sustained advertising campaign, its goods have acquired goodwill and reputation not only throughout India, but also in the country where these goods are exported. 3. The plaintiff submits that in the month of May 1990, it came across an advertisement of trade mark FINA for registration in the Trade Mark Journal No. 980 dated April 1, 1990 on page No. 8. The plaintiff thereafter filed a notice of opposition with the Registrar of Trade Marks opposing this application of the defendant no. 1 .....

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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 .....

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o have an exclusive right to use the said mark in respect of goods of its manufacture/sale. The plaintiff submits that in view of the legal notice dated November 5, 1999, issued by the defendant no. 1, it had no other option but to file the present suit as the defendant no. 1 was asserting its proprietary claim in the trade mark/trade name FINA pending proceedings initiated before the Calcutta High Court and threatening the plaintiff not to use its trade mark FENA. And that the defendants cannot .....

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that of the plaintiff s, and hence is liable to be injuncted from using the impugned trade mark. 6. The plaintiff submits that this Court has the jurisdiction to entertain this suit as the goods of the defendant bearing the impugned trade mark/trade name were being sold at Delhi, by defendant no. 3, who is carrying on business and working for gain in Delhi. The plaintiff claims that the cause of action has therefore, arisen within the territorial jurisdiction of this Court. 7. The defendant no. .....

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8. The answering defendants contend that this court does not have the jurisdiction to entertain or try the present suit, as neither of them are residing or carrying on business within the territorial limits of this Court. The defendants also submit that defendant 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 d .....

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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 damages, if so, how much? OPP 5. Whether this Court .....

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the plaintiff has produced an invoice of one M/s Pal Motors & Industries (defendant no.3) that showed the sale of FINA 20x50 . On the other hand, the Ld. Counsel for the defendant has argued that the plaintiff could not attract the jurisdiction of this Court based on merely one bill/invoice. Relying on the judgment of this court in the cases of Alberto Culver Co vs. Pioneer Products BA, 2010 (44) PTC 774 (Del.) and Heinz India Pvt. Ltd. vs. M/S Shreejee Remedies, CS (OS) No. 2367/2012, the .....

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ph 11 of the plaint, it is alleged that the defendant no. 3 was retailing in and selling the defedants goods carrying the impugned trade mark at Delhi. However, the defendants in their written statement have not only not denied the said allegation, but have admitted it as correct. 13. By virtue of the said admission and in accordance with Sec. 58 of the Indian Evidence Act, 1872, the plaintiff is not required to prove any further, the sale of goods carrying the impugned trade mark within the ter .....

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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, simi .....

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he UK and that the word FINA is a memorable and vital part of their corporate name. It was also submitted that they were the registered proprietors in India of the mark FINA in various other classes. The plaintiff herein opposed the registration of the defendants mark FINA on the ground that they have been carrying on business under the name and style of FENA for detergents and soaps since the registration of their trade mark in 1975. And that defendant s earlier registrations in India or abroad .....

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not give them or entitle them the benefit in terms of special circumstance in their favour. I am conscious of the fact that the Applicants have earlier registrations of similar mark in different classes but at the same time, it may be mentioned here that any special circumstance forming a prior registration has to be considered along with the use made thereunder. The likelihood of deception and confusion has to be assessed on the basis of evidence and cannot be left to the parties alone. The opp .....

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e rival marks is of the letter E in the opponents mark in place of letter I in the impugned mark. The different vowels in these rival marks cannot eliminate the fact of deceptive similarity between the two. On consideration of the aforesaid, the rival marks are held to be deceptively similar and therefore, the impugned mark is mandatorily prohibited in terms of Sec. 12(1) of the Act. Also, on consideration of the evidence of use and reputation enjoyed by the opponents in their prior registered m .....

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ld: 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 decis .....

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substantial bearing in deciding Issues 1 and 2 herein. As held by the Ld. Registrar, I find that the plaintiff is the registered proprietor of the trade mark FENA and that the impugned mark FINA is deceptively similar to the plaintiff s registered trade mark and will cause confusion amongst the purchasing public. 18. Meanwhile, it is also pertinent to note that the Order of the Ld. Registrar prohibiting the registration of the defendants trade mark FINA is only with respect to Class 3 goods i.e .....

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he plaintiff herein has also prayed for an injunction against the use of the defendants trade mark with respect to lubricants also. The defendants claim to be leaders in petrochemical preparations in the world over as they possess significant trans-border reputation in petrochemical products in different countries, albeit without carrying out business in India. This fact has not been controverted by the plaintiff. In such a circumstance, the goodwill and reputation attached with the parties resp .....

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he 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 .....

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ng 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/ELENTE by the defendants, he, in our opinion, committed a mistake that needs to be corrected. (emphasis supplied). 21. The Apex Court has settled the position of law on deceptive similarity across dissimilar goods in the landmark Mahendra & Mahendra Case (supra). The Court held: Without intending to be ex .....

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tself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others. 22. In the instant case, it is the admitted position that the plaintiff is a household name regarding detergent 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 relev .....

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ted out that the Registration of the defendants trade mark FINA was cancelled for non-renewal with respect to Class 3 goods, the status of the defendants trade mark in goods pertaining to other Classes are unknown and also untouched by the Order of the Ld. Registrar. Moreover, the defendants goods primarily belong to Class 4 of the Classification of Goods and Services under the Trade Mark Act i.e. Industrial oils and greases, lubricants, dust absorbing, wetting and binding, composition; fuels (i .....

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utside 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 whic .....

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has also submitted that the impugned mark was extensively advertised in various magazines and advertisements in media which are read and understood by the Indian public for the past 80 years. However, the defendants have not led any evidence to prove their assertions. Further, as noted by the Ld. Registrar in his Order dated March 4, 1997, the defendants have not been able to show the prior use of their trade mark. In light of the above, this issue is decided against the defendants. 25. Issue 4. .....

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