TMI Blog2014 (2) TMI 284X X X X Extracts X X X X X X X X Extracts X X X X ..... ere is an imitation, no further evidence is required to establish that the Plaintiff’s rights are violated. Defendant is using the word “AGIP” and its logo along with “4T PREMIUM” and not simplicitor “4T PREMIUM”. Further even the Plaintiff is using the word “VALVOLINE” with “4T PREMIUM” and not “4T PREMIUM”. In view of the aforesaid discussion, I find no reason to grant interim injunction in favour of the Plaintiff and against the Defendant - Decided against Appellant. - IA 16704/2011 in CS(OS) 2597/2011 - - - Dated:- 25-11-2013 - Mukta Gupta,JJ. For the Petitioner : Mr. Sachin Gupta and Mr. Shashi P. Ojha, Advocates. For the Respondent : Mr. N. Mahabir and Dr. Sheetal Vohra, Advocates. ORDER 1. By this application under Order XXXIX Rule 1 and 2 CPC the Plaintiff seeks ad-interim injunction in favour of the Plaintiff and against the Defendant in relation to the trademark 4T PREMIUM or any other mark identically or deceptively similar to the Plaintiff s mark 4T PREMIUM amounting to infringement of the Plaintiff s registered trademark under No. 1261544 or leading to passing off the goods or business of the Defendant as that of the Plaintiff. 2. Learned ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980; Sunder Nagar Association vs. Welfare Club (regd.) and another, 1995 PTC 270; Ishi Khosla vs. Anil Aggarwal and another, 2007 (34) PTC 370 Delhi. 4. Learned counsel for the Defendant on the other hand contends that the Plaintiff cannot claim exclusive right either in the word 4T or 4T PREMIUM because the word 4T denotes four stroke engine and the word PREMIUM is a laudatory word descriptive of the goods and no-one can claim the right to use the word exclusively. The Defendant uses its trademark AGIP with 4T PREMIUM . The packing of the Defendant is totally different from the Plaintiff and thus there can neither be any infringement nor passing of the Defendant s goods as that of the Plaintiff. The Defendant has never used the mark 4T PREMIUM separately and has always used the same with its trade name AGIP . The Defendant has already filed an application for cancellation of the Plaintiff s trademark before the Intellectual Property Appellate Board as the same could not have been registered in the first instance itself. Reliance is placed on Puma Stationer P. Ltd. and another vs. Hindustan Pencils Ltd., ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ost its primary meaning and has acquired a secondary significance as distinctive trademark used in the course of the trade indicating a source, an indicator and symbol of highest standard of quality. The Plaintiff applied for and obtained registration of the trademark 4T PREMIUM in India in Class-4 for engine oils vide registration No. 1261544 on 16th January, 2004 claiming its user since 30th September, 2003. It is the admitted case of the Plaintiff that it has no objection to the use of mark 4T simplicitor which the other players in the market are using such as CASTROL POWER, RS GPS 4T, SERVO 4T ZOOM, REPSOL 4T RIDER, RELIABLE 4T, HIZOL HONDA 4-T PLUS. The claim of the plaintiff is to the use of the mark 4T PREMIUM because the Plaintiff s mark has acquired distinctive significance and is now associated with the product of the Plaintiff. According to the Plaintiff, the Defendant dishonestly and with malafide intention is using the trademark of the Plaintiff, infringing its trademark and passing of its goods as that of the Plaintiff. The case of the Defendant is that the Plaintiff cannot claim any exclusive right to use the word 4T as the same indicates four stroke engine oi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is court in Nestle India Ltd. (supra) refused to set aside the interim injunction granted on the ground that the expression YO cannot be equated with YO! China . YO! by itself is not a trademark. Similarly in The Gillette Company and others (supra) this Court held that the real question to be answered is that whether there would be confusion and deception in the minds of the consumers. It held that it was difficult to agree with the submissions of the Plaintiff therein that the use of trademark EKCO FLEXGRIP by the Defendant would create confusion with the Plaintiff s trademark LUXOR PAPER MATE FLEXGRIP . It was held that if the complete trademarks adopted by the two parties are compared, the same are totally different and confusion seems to be unlikely. In Rich Products Corporation and another (supra) this Court held that despite the word Whip Topping being a common word, the combinations were totally different in RICH S WHIP TOPPING and BELLS WHIP TOPPING. It was held: 36. Since lengthy submissions were made by both sides with respect to whether or not "WHIP TOPPING" is a generic and/or a descriptive expression, it may be necessary to briefly touch upon this aspect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... escriptive mark has become the trade mark. The defendant can ward off a challenge in respect of a mark in which the plaintiff claims proprietorship rights and seeks to enforce his rights whether on the basis of the registration or otherwise; on the ground that the trade mark is a descriptive word or consists of words which are descriptive of the character and quality of the product as long as the use is bonafide or that the descriptive word is well known or used extensively by third parties. 38. The plaintiff, in order to demonstrate that "WHIP TOPPING" has attained secondary distinctive meaning, has relied upon the affidavits of PW1 to PW4. The plaintiffs' witnesses attempted to prove the extensive promotion of its trade mark "RICH'S WHIP TOPPING" through indices such as the world wide turnover of its product, which included the sales in India, the amount spent on promotional material and the extensive publicity received over the years in newspapers and journals both in India and abroad. I have already observed hereinabove the use of the mark by itself does not translate into distinctiveness. The distinctiveness should be of an order which displaces the "primary descriptive mean ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff s rights are violated. It was held that if two marks are identical, no further question arises and the infringement is made out. When the two marks are not identical, the Plaintiff would have to establish that the mark used by the Defendant so nearly resembles the Plaintiff s registered trademark as is likely to deceive a false conclusion in relation to the goods in respect of which it is registered. 12. In Cadila Healthcare Ltd. v. Gujrat Co-operative Milk Marketing Federation Ltd. and Ors. 2009 (VIII) AD 350 it was held: 8. In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the ex ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... does so with the clear knowledge of the possibility of other traders also using the said mark. That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Act. The said Sections read as follows: - 9. Absolute grounds for refusal of registration.-(1) The trade marks- (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-know ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ented to the use of the trade mark; or (ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark; (d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be; (e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to ..... 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