Name of the Case – Ahmed Oomerbhoy v/s Gautam Tank
CS(OS) No.806 of 2005
Decided On,
20 December 2007
At,
High Court of Delhi
By, THE HONOURABLE MR JUSTICE ANIL KUMAR
For the Plaintiff: Praveen Anand, Advocate. For the Respondent: Ms.Pratibha M. Singh & M.K. Minglani, Advocates.

Published In
2008 (146) DLT 774, 2008 (2) AD (Del) 447, 2008 (36) PTC 193
Judgment Text
IA No. 4575 of 2005& I.A. No. 4820/2005

ISSUE –

If the Defendants ‘use Of the Trademark’ “ SUPER POSTMAN” ‘ For Edible Oils Constitute Infringement Of The Plaintiffs “Registered Mark ‘Postman’ .

Whether The Plaintiff Can Be Granted An Interim Injunction Not with Standing (i) Charges of Non-use  , (ii) Filing of a Rectification Petition , And (iii) Registration of Both The Marks Under The Trade Marks Act ,1999.

RULE – 

Under section 28(1) of the trademark act ,the registered owner of a trademark has an Exclusive right of use of the mark in respect of which it is registered , and is entitled to relief in case of passing off .Section 27(2) of the Act , however , Enshrines the common law right of passing off  Regardless of registration of the mark. This principle was confirmed in N.R. Dongre v. Whirlpool (AIR 1995 Delhi 300), wherein the court held that although both parties have registered trademarks, an action for passing off can be brought if there is misappropriation of goodwill. That filing a petition for rectification makes the registered trademark unenforceable is not the law. Courts have ruled, including in Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya (AIR 1975) and Poddar Tyres Ltd., that interim relief can nevertheless be ordered pending rectification proceedings.

In the case of invented and arbitrary marks, words that are generic in common usage—like “Postman”—can be deemed arbitrary when applied to a different context like edible oil. Such marks deserve robust protection, as confirmed in Abercrombie & Fitch v. Hunting World and the “Ivory Soap” rule. In adjudging trademark infringement, the courts employ the “triple identity test,” which calls for similarity of marks, similarity of goods, and coinciding market or trade channels. Small disparities in packaging or presentation are not enough to preclude a finding of infringement, as decided in Lal Sons Machines (1986 RLR 165).

On the question of adoption and use, a party adopting a trademark in spite of awareness of its earlier use by another cannot plead honest adoption. Where a commitment has been made by such a party to withdraw their application for a trademark if objections are raised, they stand estopped from raising any later claims, as held in A.V. International Ltd. (AIR 1991 Delhi 22). Finally, courts shall award an interim injunction where the plaintiff has shown a prima facie case, the probability of irreparable injury, and where the balance of convenience is in their favor.

ANALYSIS –

Plaintiffs had been using the mark “Postman” for quite some time and had registered several trademarks under Class 29.Defendants started selling edible oils under “Super Postman” with close shape, colour scheme, and label, resulting in likelihood of confusion.Although there were slight differences (e.g., inclusion of “Super”), overall impression remained the same, particularly to an average consumer having ordinary intelligence. Defendants acknowledged notice of plaintiff’s mark and made a commitment to withdraw their trademark application if opposed—this was kept hidden until uncovered by the plaintiffs.The petition for rectification submitted by the defendants does not put the plaintiffs’ rights or registration in suspense.The five-year non-use argument and purported abandonment were not believed prima facie, since cessation of business activities in 2000 does not necessarily mean stopping the use of trademark.The defendants also asserted advice that unused marks can be legally adopted, but legal opinion or certification (ISO, AGMARK) does not justify infringement.Balance of convenience was in favor of the plaintiffs because of long use, goodwill, and confusing similarity in products of the defendants. 

CONCLUSION-

The Court held that prima facie case was made out in the favor of the plaintiffs, due to their established use and registration of the mark “Postman.” Further, it noticed that the balance of convenience was in favor of the plaintiffs, and they were bound to suffer irreparable loss if the defendants proceeded with the use of the similarly deceptive mark “Super Postman.” The Court, therefore, rejected the defendants’ application for vacating the interim injunction. In contrast, the plaintiffs’ application was granted, and the defendants were enjoined from selling edible oils under the name “Super Postman” and from infringing the copyright and trade dress of the plaintiffs until the suit.