HK Avenue, 19, Swastik Society
Navrangpura
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : info@hkindia.com
Web : www.hkindia.com

2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857

Plaintiff has sought an interim injunction against the defendants so as to prevent the defendants from using mark JYOTI or JYOTI Label or any other mark/Label identical with or deceptively similar to plaintiff's trade mark JAYNA or JAYNA Label or wrapper or packaging.

The plaintiff has adopted the trade mark JAYNA as a word mark and a label (JAYNA Label) in respect of its auto parts, diesel oil engine parts and parts used in generators, electric motors etc. The plaintiff stated that JAYNA LABEL represented word mark JAYNA written in a stylish and artistic manner inside a rectangle with red background surrounded by yellow and red border line. The plaintiff enjoyed tremendous reputation and goodwill in the business of auto parts. The plaintiff is the registered proprietor of the JAYNA. The plaintiff has no objection as far as word JYOTI concerned per se but plaintiff was aggrieved by user of a label depicted word JYOTI within rectangle, making it deceptively similar to the label of plaintiff.

The defendants were an old established firm engaged in business of manufacturing and marketing of parts and fittings of Mopeds, Scooters, Motorcycles and Three wheelers. The mark JYOTI is a part of name of the defendants' firm namely Jyoti Automobiles which is the name of the wife of the defendant. The defendants have been using the mark JYOTI continuously for last 27 years for their products. The defendants are registered proprietor of the trade mark JYOTI and the JYOTI Label.

The plaintiff contended that the resemblance of plaintiff's trade mark with that of the defendant's trade mark was so close that this was disseminating confusion and deception in the market with the result the spurious goods of the defendants were selling in the market as genuine goods of the plaintiff. The plaintiff submitted that the writing and lettering style of word JYOTI is identical to the writing and lettering style of the plaintiff's trade mark JAYNA especially size and other features and placement and adjustment of letters of word JYOTI made it look like similar to the trade mark of plaintiff namely JAYNA and JAYNA Label. The plaintiff claimed that the defendants obtained impugned registration by misrepresentation, concealing and by playing underhand tactics with the Registrar of Trade Mark. Thus the impugned registration is void ab initio and cannot claim to be the proprietor of the impugned mark or label.

The defendant stated that they are prior user of the trade mark JYOTI and the suit has been filed by the plaintiff only to harass the defendants. It is also stated that there is no similarity in the trade marks JYOTI and JAYNA. It is submitted that the defendants are registered proprietor and prior user of the trade mark JYOTI and had a right to use the trade mark even if it was similar or identical to that of the plaintiff. It is stated that the defendants had been inserting advertisements in various magazines and this was within the knowledge of the plaintiff. The suit filed by the plaintiff was barred by the acquiescence. It is also submitted that regarding placement of word JYOTI in a square, it is stated that the style of writing word in trapezium was a common style being used in several Industries. It is submitted that trapezium was a geometric figure in public domain and cannot be a monopoly of the plaintiff.

The Hon'ble High Court held that both the marks of the plaintiff and defendant are altogether different, even the words JAYNA and JYOTI are different. It is plaintiff own case that he has no objection at use of word JYOTI. It is considered that trapezium, a geometrical figure, cannot be considered a proprietorship of plaintiff or any other person. It is public juris geometrical figure and any body can use a trapezium as a part of its trade mark or style. The application of the plaintiff is dismissed.
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The appellant has filed suit against the respondents for relief of perpetual injunction restraining them from selling safety matches, manufactured and marketed by them using the offending trade mark, which is similar to the trade mark using for the safety matches manufactured by the Appellant. The appellant has also filed an application for removal of the registered trade mark PLUS5 of the respondent before the Intellectual Property Appellate Board. The competent appellate authority confirmed the decision to issue registered trade mark in favour of respondent for using PLUS5 as trade mark in a proceeding wherein said trade mark was challenged by the present appellant.

The appellant is the proprietor of distinctive trade mark consisting of word PLUS2 along with distinctive device of heart visual also having distinctive get up by out arrangement and colour scheme. The appellant has adopted the said mark in the year 1984. The appellant is doing his substantial business in the sale of safety matches under the trade mark PLUS2, particularly in the districts of Aurangabad. The appellant came to know the respondent was manufacturing safety matches bearing offending mark PLUS5 which is identical to the mark PLUS2 of the appellant.

The appellant states that due to use of offending similar mark the customers are purchasing safety matches manufactured by defendant under his belief that they are purchasing safety matches with trade mark PLUS2. It is stated by the appellant that the respondent No. 2 is a dealer of respondent No. 1. The respondents are retail sellers of goods at Aurangabad. The respondents are also passing off safety matches bearing offending trade mark PLUS5 as and for well known and reputed safety matches bearing trade mark PLUS2. It is also stated that in a raid effected by the Excise Officers, large quantity of boxes bearing mark PLUS5 which is also identical to PLUS2 with minor changes is found.

The respondent during arguments denied that he was doing business through respondent No. 2. According to him he is proprietor of distinctive trade mark consisting of word PLUS2 without arrow and round shape like apple fruit and logo of his personal photo to avoid multiplicity. Therefore there is no question of infringement and / or passing off by respondent No. 1. It is stated that the appellant has not registered the colour or design. The appellant is using different designs for that of registered trade mark. It is stated that the device cross is the mark of Christian community and the figure 2 is common for all the public. Therefore the registered trade mark of the appellant does not give him right to use Cross or figure 2 exclusively. It is stated that the appellant had subsequently modified the label by incorporating his own portrait on the side of the distinctive PLUS2 artistic device. It is also stated that the registration is not respect of colour, label and size of the label. There is difference in the kind of work and display of label.

Hon'ble High Court of Mumbai held that the applicant having obtained registration one mark cannot make false statements that the modified label is also registered under the same number and the said act of the applicant only goes to the dishonest intentions of the applicant. The Hon'ble Court has come to a conclusion that there is no evidence of infringement to trade mark or passing of and this is not a case to issue temporary injunction. Further, granting temporary injunction by this court in this appeal would be indirectly upsetting the decision of the Appellate Board. Accordingly the present appeal is dismissed.
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Domain Name

I Plus Inc( Plaintiffs )

V/S.

Consim Info Private Limited & Anr.(Defendants)

2010 (42) PTC 50 (Bom)

IndiaProperties.com v/s. IndiaProperty.com

GENERIC AND DESCRIPTIVE WORDS ARE NOT AND CAN NEVER BE CAPABLE OF PROTECTION AS A TRADE MARK

The plaintiffs are the registered proprietor of their domain name indiaproperties.com since the year 1996. The defendants have also applied for and got registered their domain name Indiaproperty.com with the Network Solutions Inc in the year 2001. Therefore the plaintiffs have filed the suit and notice of Motion to restrain the defendants from using domain name Indiaproperty.com and other relief.

The plaintiffs have received letter from clients indicated that they have used defendants' website assuming it to that of the plaintiffs. In the year 2001 the plaintiffs have issued legal notices to other two companies which were using a deceptively similar domain name as that of the plaintiffs as a result of which the companies had stopped using the said name. The conflict of domain names in the present case also connects with the dispute about the trade marks and passing off action. The plaintiffs though aware of the registration of defendants since 2004, only after exchanging letters some time in June 2006 and filed the suit in August 2006 along with the Notice of Motion.

The defendants have been using extensively the said domain name and have also built up huge goodwill and reputation. There is also material on record to show the huge business, sales and purchase figures, expenses and the popularity in support of their defense. The submission the delay or latches that should not be the reason to refuse interim relief so claimed as there is a case and material in support of plaintiff for the relief.

Hon'ble Court held that the domain name of the plaintiff comprising two generic and descriptive words “India” and “Property”, therefore are not and can never be capable of protection as a trade mark. These words are also not coined words of the Plaintiffs. Moreover the said trade mark has also not acquired a secondary meaning which is precondition for granting protection to descriptive words. Even otherwise, the concerned customers once open the site, unless log in and registered, cannot do business, merely by opening the site. Therefore such person with full knowledge, if opens the site, by typing the domain name, even at this stage, there is no case of any confusion and / or hampering of any business as alleged. Once site open, the respective logo, the basic graphics, branded words or trade marks, shape or design, shape of the page and colour combination and words itself separate the website/ site from the respective business and purpose. The popularity of such website is also depends upon the satisfaction of service of business or service which the said website provide to the customer or the client. There is no question of confusion or wrong impression. The internet domain name is nothing but an internet protocol, electronic specified address and a unique identification. There is nothing to control the physical boundaries / jurisdiction irrespective of the domestic laws or regulations. The user of the internet knows the various facets of internet business. Thus the submission therefore based on prior use itself is also not sufficient to grant any interim relief. In conclusion the plaintiffs failed to make out the prima facie case or any connected reasons to grant any relief as prayed in the Notice of Motion hence, dismissed.