Girnar Food & Beverages Pvt. Ltd. V. Godfrey Philips India Ltd. 2001 SCC OnLine Del 294
- By Kanishka
- Judgment Analysis
Name of the Case- Girnar Food & Beverages Pvt. Ltd. V. Godfrey Philips India Ltd. 2001 SCC OnLine Del 294
First Appeal Order (OS) Appeal No.185 of 1997 Decided On, 19 March 2001 At, High Court of Delhi By, THE HONOURABLE MR. JUSTICE DEVINDER GUPTA & THE HONOURABLE MR. JUSTICE MUKUL MUDGAL For the Appearing Parties: A.H. Desai, Manmohan Singh, Nil Mason, Pravin Anand, T.N. Daruvala, Advocates. Published In:- Published In 2001 (90) DLT 839, 2001 (1) ILR (DLH) 1
ISSUE
Whether the appellant, Girnar Food And Beverages Pvt. Ltd., by using the trademark “SUPER CUP” for selling tea, had infringed the registered trademark rights and committed passing off against the respondent, Godfrey Phillips India Ltd., who had prior and registered use of the same mark.
RULE
By the Trade and Merchandise Marks Act, 1958, the owner of a registered trademark has the right to protection against others’ use of identical or deceptively similar marks for similar goods within the same class. In the case of a claim of infringement, the plaintiff is not required to establish more than that the defendant’s mark is similar and for similar goods.
On the other hand, passing off is a common law relief invoking proof of:
Pre-existing and significant goodwill in the mark,
Falsification that is likely to deceive or confuse the public,
Injury to the plaintiff’s business or reputation as a result of the defendant’s use.
Balance of convenience, prima facie case, and irreparable harm are also considered by courts in deciding whether an interim injunction should be granted.
ANALYSIS
Godfrey Phillips had been using the mark “SUPER CUP” for tea since 1986, registered the same in 1989, and spent Luxuriously on advertising and promotion. The packaging had a yellow/red color scheme, and their product had good goodwill in the market.
Girnar, however, started adopting an almost similar mark, “SUPER CUP”, with almost comparable packaging, only in 1994-1995. In spite of their assertion of earlier use, Girnar did not provide any invoices or corroborative evidence of usage prior to 1994. They also persisted with the mark in spite of notice of infringement by Godfrey Phillips.
The Court observed that Girnar’s adoption of the mark seemed to be deceptive with the intent to utilize the respondent’s goodwill. There has been Lack of bona fide uses coupled with the deceptive similarity distorted the balance towards the respondent.
Based on these facts, an interim injunction had already been granted by the Single Judge against Girnar. The Division Bench saw no infirmity in that rationale and concurred with the recommendation that allowing the appellant to proceed would be tantamount to promoting infringement.
CONCLUSION
The Delhi High Court have been rejected the appeal based on Girnar Food and Beverages Pvt. Ltd., thus confirming the interim injunction order in the fully favour of Godfrey Phillips India Ltd. The Court was of the view that the defendant (Girnar) had deceptively replicated the plaintiff’s trademark, “SUPER CUP”, and its use constituted passing off.
The Court held that although the word “Cup” is generic, the mark “SUPER CUP” had gained distinctiveness by virtue of its extensive and consistent use by the plaintiff. Hence, permitting the defendant to use the mark deceptively similar would lead to confusion among the consumers and water down the goodwill of the plaintiff’s mark.
