Thapsons Pvt. Ltd. v/s Ashoka Food Industries & Another I.A. No. 7084 of 1988
Name of the Case- Thapsons Pvt. Ltd. v/s Ashoka Food Industries & Another
I.A. No. 7084 of 1988
in suit No. 2525 of 1988 Decided On, 01 April 1991 At, High Court of Delhi By,
THE HONOURABLE MR. JUSTICE P.K. BAHRI For the Petitioner: K.G. Bansal With S.K. Bansal, Advocate. For the Respondent: V.P. Ghiraya, Advocate.
ISSUE
Whether the plaintiff (Thapsons Pvt. Ltd.), being the non-registered owner of the trademark “Lotus” but having used the mark since 1982 and got the label’s copyright registered, is held entitled to a temporary injunction to stop the Case defendants from using the same trademark and the device on similar goods, in light of the claim of passing off by the plaintiff.
RULE
In an action for Preceding passing off, the following should have been proved:
Use of the trademark by the plaintiff prior to the defendant’s use;The mark should be distinct and should have a reputation among the plaintiff’s goods,There should be a possibility of the public being deceived or confused;The plaintiff does not have to be registered to own the trademark;Registration of a trademark by third parties is immaterial unless proof of actual user is established (Century Traders v/s. Roshan Lal Duggar And Co. AIR 1978 Delhi 250);Trademark operators are not entitled to injunctive relief (Capital Plastic Industries v. Kaypee Plastic Industries, AIR 1989 NOC (Delhi) 60);
Copyright protection under the Copyright Act, 1957 can also be enforced where artistic work (such as a label) is reproduced.
ANALYSIS
The plaintiff has been applying the “Lotus” mark with a lotus flower symbol on Atta, Maida, Suji, and Bran products since 1982.Plaintiff sought trademark registration in 1983 (still pending) and is copyright registered for the label.Evidence of long-standing use, widespread advertising, and spending, evidencing the mark becoming distinctive of its goods, was presented by the plaintiff.The defendants began to use the same mark and device subsequently, for the same goods, and consumer confusion was alleged by the plaintiff.
The defendants put forward the following arguments:The mark “Lotus” is in common use;It is already registered in the names of other firms (e.g., Pure Food Producing Co., Shah & Co.);The plaintiff is a pirator.
But the court held:
The trademark of the Pure Food Producing Co. was not renewed after 1984;There was no proof of use of the mark in fact by any other party for Atta;There was no justification by the defendants for their adoption of a similar mark and label;The labelled mark used by them was copied, which was also copyright infringement.Thus, the court established a strong prima facie case for the plaintiff with no proof of piracy, and also identified a likelihood of confusion.
CONCLUSION
The court granted the application and upheld the interim injunction preventing the defendants from using the “Lotus” mark and device until final disposal of the suit.
I agree with the Judgement, The plaintiff proved prior use and distinctiveness of the mark, and the court held trademark registration by others without evidence of use does not defeat a passing off claim.
