2013 (11) TMI 786 - HC - Companies Law

Court rules in favor of plaintiff on 'PATTA' trademark, maintains injunction. Defendant's ownership of 'PTA' recognized.

The court ruled in favor of the plaintiff regarding the trademark 'PATTA' and maintained the injunction against the defendants. However, the injunction ... Trademark infringement - Ownership of trademark - Defendants claims to be the registered owner of Plaintiff's trademark PTA and PATTA - Held that:- As regards the plaintiff”s right in the trademark PATTA is concerned. the same is not disputed by the defendant, who claims no right in it or user thereto. Consequently, the interim injunction qua the trademark PATTA is made absolute till the disposal of the suit. However, with regard to the trademark PTA, the claim of the plaintiff is that the plaintiff is embossing the same on the products. Learned counsel for defendant No.1 has taken me through the booklets on screws and print out from the websites of the plaintiff of its products i.e. document filed by the defendant from pages 162 to 210 which have been admitted by the plaintiff. In none of the booklets the screws show the mark of PTA embossed on the heads of the screws. It is evident from the record that in the plaint the plaintiff has misstated facts. It is stated that in relation to its trademark PTA the registration applications are pending before the Trade Mark Authority. The present suit was instituted on 30th May, 2011 by which time the applications of the plaintiff No. 1870842 had already been rejected. Even the application filed by Kanta Aggarwal on behalf of the sister concern i.e. M/s. RSA Fastners had been rejected. Further, in the application No. 1898926 the date of user was shown to be “proposed to be used” and it was not claimed that the trademark was being used. There is no dispute that the defendant No.1 is the registered owner of the trademark PTA and has been selling its goods since the year 2002. Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12 (3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. The onus and burden is on the defendant to show that the user and adoption at the initial stage was honest. Further where an alleged infringer had built up the trade with the specific knowledge of the proprietor, the prejudice suffered by the infringer was a relevant factor and an additional circumstance to deny injunction. Plaintiff is not registered trademark holder of the trademark PTA in India. The only invoice dated 13th October, 2004 relating to the use of screws with mark PTA embossed on the heads related to the defendant No. 2, which according to the defendants were customized goods manufactured from them. Indubitably while deciding a dispute regarding a trademark not only the rival claims of the parties are a relevant consideration, but the fact that an honest consumer of goods and service is not deceived has to be equally borne in mind. Further admittedly the plaintiff in its application has stated that it proposes to use the mark PTA. In none of the advertisement, folders and the websites print out which have been admitted by the plaintiff during admission/denial of the documents the mark PTA has been found to be embossed on its products. The plaintiff has not been able to prove itself to be the prior user of the trademark PTA as against which the defendant No.1, who is owner of the trademark PTA. Consequently, the applications are disposed of confirming the ad interim ex parte injunction against the defendants qua the trademark PATTA, however, vacating the same qua the trademark PTA - Decided in favour of appellant. Issues Involved:1. Ownership and usage rights of the trademarks 'PATTA' and 'PTA'.2. Allegations of trademark infringement and passing off.3. Validity and enforceability of the plaintiff's trademark registrations.4. Claims of prior use and first adoption of the trademarks.5. Concealment of material facts by the plaintiff.6. Interim injunction and its implications.Detailed Analysis:1. Ownership and Usage Rights of the Trademarks 'PATTA' and 'PTA':The plaintiff, a company based in Taiwan, claims ownership of the trademarks 'PATTA' and 'PTA', asserting that these trademarks have been in use since 1987 and 1990, respectively. The plaintiff argues that these trademarks are distinctive and associated with high-quality hardware products. The plaintiff has registered these trademarks in various countries, including India, where 'PATTA' was registered on November 1, 2004, and 'PTA' is pending registration.The defendant acknowledges the plaintiff's ownership of 'PATTA' but disputes the ownership of 'PTA', claiming that the defendant registered 'PTA' in 2008 and has been using it since 2002. The court noted that the plaintiff's application for 'PTA' had been rejected, and the defendant is the registered owner of 'PTA'.2. Allegations of Trademark Infringement and Passing Off:The plaintiff alleges that the defendants are using trademarks deceptively similar to 'PATTA' and 'PTA', leading to confusion and unfair competition. The plaintiff seeks a permanent injunction to restrain the defendants from using these trademarks.The court initially granted an ex-parte ad interim injunction restraining the defendants from using 'PATTA' and 'PTA'. However, upon further examination, the court found that the plaintiff misstated facts regarding the usage and registration of 'PTA'.3. Validity and Enforceability of the Plaintiff's Trademark Registrations:The plaintiff claimed that its trademarks 'PATTA' and 'PTA' are registered and have acquired a reputation for quality. However, the court found that the plaintiff's application for 'PTA' had been rejected, and the plaintiff did not disclose this rejection. The court emphasized that the plaintiff's claim regarding the pending registration of 'PTA' was incorrect.4. Claims of Prior Use and First Adoption of the Trademarks:The plaintiff argued that it was the first adopter and user of the trademark 'PTA' globally, citing the case Milmet Oftho Industries & Ors. Vs. Allergan Inc. The plaintiff provided evidence of packaging and products with the trademarks 'PATTA' and 'PTA'.The defendant countered that the plaintiff did not use 'PTA' in India and that the plaintiff's application for registration stated 'proposed to be used'. The court found that the plaintiff had not proven prior use of 'PTA' in India, whereas the defendant had been using it since 2002.5. Concealment of Material Facts by the Plaintiff:The defendant accused the plaintiff of concealing material facts, such as the rejection of the trademark application for 'PTA'. The court agreed, noting that the plaintiff misstated facts about the pending registration and prior use of 'PTA'. The court emphasized the importance of honesty in trademark disputes, referencing cases like Anshul Industries Vs. Shiva Tobacco Company and Jolen Inc. Vs. Shobanlal Jain.6. Interim Injunction and Its Implications:The court initially granted an interim injunction against the defendants, restraining them from using 'PATTA' and 'PTA'. However, upon reviewing the evidence and arguments, the court vacated the injunction regarding 'PTA' but made the injunction regarding 'PATTA' absolute until the disposal of the suit.The court concluded that the plaintiff had not proven prior use of 'PTA' and that the defendant is the registered owner of 'PTA'. The applications were disposed of, confirming the injunction against the defendants for 'PATTA' but vacating it for 'PTA'.Conclusion:The court ruled in favor of the plaintiff regarding the trademark 'PATTA', maintaining the injunction against the defendants. However, the court vacated the injunction concerning 'PTA', recognizing the defendant's registered ownership and use since 2002. The plaintiff's concealment of material facts and incorrect statements about the registration and use of 'PTA' were significant factors in the court's decision.