IP Connect

India: Calcutta High Court ordered that only the Registered Proprietor of the Trademark can sue for its Infringement

On June 27, 2016, the Hon’ble Calcutta High Court ruled in favor of Three Leaves India Pvt. Ltd., by rejecting the plea of the Petitioner for extending the ad interim order of injunction. In the present matter, the Court also noted that a trademark infringement case can only be filed by the registered proprietor or the authorized licensee and not by the user of the trademark.

Case Summery

The Respondent, Three Leaves India Pvt. Ltd.,  was restrained from selling and/or offering for sale or market tea in a packet, the labels of which contained ‘Nowalty’ as it was similar to or a colorable imitation of the Petitioner’s,  logo or product ‘Lipton’ . It was further argued before the Court that the word ‘Lipton’ is a registered trade mark written in a distinct artistic font in unique shape. It was argued that the Respondent has not only infringed the trade mark but has also passed off its product in such get up and style which is deceptively similar to the trade design and get up of the Petitioner’s product. The Respondent’s advocate submitted that the suit for infringement of trade mark is not maintainable before this Court in view of Sections 52 and 53 of the Trade Marks Act (hereinafter referred as the Act) as the registration of the mark ‘Lipton’ stands in the name of Unilever PLC, a company registered under the laws of England. The moment those arguments were advanced by the Respondent, the learned advocate for the Petitioner took a rebound and drifted his stand in contending that the instant suit is filed for infringement of copyright and not for the infringement of trade mark and passing off action. The Court did not extend the ad interim order of injunction made ex parte on presentation of the documents by the Respondents detracting and demolishing the Petitioner’s case. 

Contentions of the Petitioner

• The Respondent is marketing and selling its product through the mark ‘Nowelty’ on the packets in which the product is sold, which is similar and identical to the Petitioner’s label in trade design, graphics and color combination.
• The word ‘Lipton’ is a registered trade mark written in a distinct artistic font in unique shape.
• The Respondent has not only infringed the trade mark but has also passed off its product in such get up and style which is deceptively similar to the trade design and get up of the Petitioner’s product.
• The relevant paragraph from the plaint was placed before the Court in a convincing manner, that it is a case of an infringement of a trade mark and in view of Section 134 of the Trade Marks Act, 1999 the proceeding can be initiated before this Court as the Petitioner are carrying on business within the territorial jurisdiction thereof.
• The moment arguments on laws are advanced by the Respondent, the learned advocate for the Petitioner took a rebound and drifted his stand in contending that the instant suit is filed for infringement of copyright and not on infringement of trade mark and passing off action.
• According to the Petitioner Section 62 of the Copyright Act 1957, confers the jurisdiction upon this Court and therefore, the present suit is maintainable in the Hon’ble Court.
• By the deed of assignment of copyright the artist have assigned the artistic work in favor of the Petitioner and, thereafter the Petitioner as a proprietor of such copyright can initiate an action the moment the infringement is realized.
• The cause of action for infringement of a copyright is averred and pleaded and, therefore, the suit should not be construed to have been founded upon the infringement of trade mark and passing off.

Contention of the Respondent

• The suit for infringement of the trade mark is not maintainable before this Court in view of Sections 52 and 53 of the Act as registration of the mark ‘Lipton’ stands in the name of Unilever PLC, a company registered under the laws of England. According to the Respondent, there is no document annexed to this application evincing that the said trade mark is either assigned or a license has been given to the Petitioner to use the said trade mark.
• There has been a gross suppression of material facts and the attention of the Court was not drawn to the relevant paragraphs of the petition from where it would discern that the entire case is founded on an infringement of a trade mark and passing off.
• The Respondent, also highlighted several paragraphs of the petition where the Petitioner has categorically stated that he has a license of the registered trademark “Lipton” and possess rights in trade dress and overall get up of Lipton itself.
• There is no fetter on the part of the Court in refusing or extending the ad interim order on the returnable date before inviting the Respondent to disclose facts in the form of affidavit if the materials produced by the Respondent are sufficient enough to demolish the case made out in the plaint as well as injunction application.
• The Respondent referred the definition of a trade mark mentioned under section 2(zb) of the Act, to mean a mark capable of being represented graphically and which is capable to distinguish the goods or service of a person from those of others and may include shape of goods, packaging and combination of colors. He further drew the attention of the Court to a definition of the registered trade mark under Section 2 (w) of the Act to mean the trade mark which is actually on the register and remaining in force.
• On the case of passing off, the Respondent contended that he is carrying on the business outside the jurisdiction of the Court, hence the present matter is not maintainable in this Hon’ble Court.
• The Petitioner exploited his resources in securing the police assistance and help rendered to the Special Officer in carrying out the directions, passed on May 12, 2016, when the order does not indicate such police help.

Observations of the Court

• A meticulous reading of the plaint would reveal that the Petitioner has categorically stated that he has a license of the registered trademark “Lipton” and possess rights in trade dress and overall get up of Lipton itself.The substantive reliefs claimed in the plaint are based upon the infringement of the trademark and passing off, except one, where the Petitioner also claimed a decree of permanent injunction against the Respondent from infringing the copyright.
• Apart from a solitary prayer, the Court did not find any averments pertaining to its jurisdiction under the provisions of the Copyright Act.
• The plaint as well as the injunction application lacks material documents relating to an assignment of the trademark in favor of the Petitioner.
• An ad interim order in interlocutory proceedings does not necessarily bind the Court or the parties at the later stage of the proceedings. An ad interim order is usually made on the basis of the Petitioner’s version of things which is supported by an affidavit and the documents relied upon in the petition. If the ad interim order is made ex parte, the Respondents are permitted to present their version or documents to detract from the Petitioner’s case, on the returnable date.
• The Petitioner has misused and mutualized its resources in procurement of the police help to render assistance to the special officer appointed by this Court in carrying out the directions passed on May 12, 2016.
• The ad interim order was obtained by misleading the Court and causes immense sufferance to the Respondent.

Held

The Court declined to extend the ad interim order of injunction and also imposed a cost assessed at Rs. 2 Lakh, to be paid by the Petitioner to the Respondent.