2014 (1) TMI 1217 - HC - Companies Law

Court rules in favor of FMCG company in trademark infringement case, restricts use of 'REAL' mark by defendant.

DABUR INDIA LTD. Versus REAL DRINKS PVT. LTD. AND ANR.

DABUR INDIA LTD. Versus REAL DRINKS PVT. LTD. AND ANR. - TMI Issues Involved:1. Trademark Infringement2. Passing Off3. Maintainability of the Suit4. Jurisdiction5. Prior Use and Goodwill6. Section 28(3) of the Trade Marks Act, 19997. Interim ReliefDetailed Analysis:1. Trademark Infringement:The Plaintiff, a well-known FMCG company, alleged that Defendant No.1 was infringing on its registered trademark 'REAL' by using the same mark for its fruit-flavored drinks and aerated drinks. The Plaintiff argued that the use of the identical mark by Defendant No.1 was likely to cause confusion and deception among consumers, constituting trademark infringement. The Court noted that Defendant No.1's use of 'REAL' was prima facie likely to cause confusion and dilute the Plaintiff's trademark. The Court held that the Plaintiff was entitled to protection against the use of the mark 'REAL' by Defendant No.1 outside Goa.2. Passing Off:The Plaintiff also sought relief on the grounds of passing off, claiming that Defendant No.1's use of the mark 'REAL' misrepresented its goods as those of the Plaintiff, thereby causing damage to the Plaintiff's goodwill. However, the Court found that the Plaintiff's pleadings regarding the availability of Defendant No.1's products in Delhi were vague. Since Defendant No.2 had already suffered a decree and was no longer part of the case, the Court concluded that the suit for passing off was not maintainable.3. Maintainability of the Suit:Defendant No.1 challenged the maintainability of the suit under Section 134(1) of the Trade Marks Act, 1999, arguing that the Plaintiff could not seek protection for the word 'REAL' alone. The Court rejected this challenge, citing the law explained in Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, which allows the Plaintiff to claim protection for the prominent feature of the label mark 'REAL'. The Court held that the suit for infringement was maintainable.4. Jurisdiction:The Court addressed the issue of jurisdiction, noting that the Plaintiff had an office in Delhi and its products were widely available in Delhi. The Court held that it had the jurisdiction to entertain the suit as one for infringement under Section 134(1) of the Trade Marks Act, 1999.5. Prior Use and Goodwill:Defendant No.1 claimed to be the prior user of the mark 'REAL' in Goa since 1976 and argued that the Plaintiff could not monopolize the word 'REAL'. The Court found that Defendant No.1's use of the mark 'REAL' was limited to Goa and that the Plaintiff had been extensively marketing its 'REAL' juices throughout India for several years, establishing considerable goodwill and reputation. The Court held that the Plaintiff was prima facie entitled to restrain Defendant No.1 from using the mark 'REAL' outside Goa.6. Section 28(3) of the Trade Marks Act, 1999:Defendant No.1 argued that under Section 28(3) of the Trade Marks Act, 1999, the Plaintiff could not sue for infringement as both parties held registrations for identical marks. The Court noted that the protection to a mark is conditional upon its validity and that the Plaintiff had applied for rectification of Defendant No.1's mark, which was pending before the Intellectual Property Appellate Board (IPAB). The Court held that the Plaintiff was not precluded from seeking to restrain Defendant No.1 from using the mark 'REAL'.7. Interim Relief:The Court addressed the interim relief granted by the Division Bench, which allowed Defendant No.1 to use the registered trademark 'REAL MANIK' within Goa. The Court maintained this interim arrangement, allowing Defendant No.1 to use its registered marks 'REAL MANIK' and 'REAL CAF'E' within Goa, but not outside it. The Court emphasized that this order did not constitute a final opinion on the merits of the case.Conclusion:The Court directed that the interim arrangement put in place by the Division Bench would continue during the pendency of the suit. The Plaintiff's application for interim relief was disposed of, and Defendant No.1's application for vacation of the stay order was dismissed, with no order as to costs.