TaxTMI 
TaxTMI 
2013 (8) TMI 352
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....A is a registered trade mark under the Registration Nos. 306411 and 430692 with respect to Class 3 goods dated June 20, 1975 and December 4, 1984 respectively. And that these trademarks registrations were duly renewed and are subsisting till date. The plaintiff submits that on account of excellent quality, country vide marketing network and sustained advertising campaign, its goods have acquired goodwill and reputation not only throughout India, but also in the country where these goods are exported. 3. The plaintiff submits that in the month of May 1990, it came across an advertisement of trade mark FINA for registration in the Trade Mark Journal No. 980 dated April 1, 1990 on page No. 8. The plaintiff thereafter filed a notice of opposition with the Registrar of Trade Marks opposing this application of the defendant no. 1, being Opposition No. CAL-2221. The said proceedings were contested before the Trade Mark Registry, Kolkata. Vide Order dated March 4, 1997 the Registrar of Trade Marks was pleased to allow the opposition of the plaintiff and dismissed the Trade Mark No. 443079 of the defendant no. 1 for registration of the trade mark FINA under Class 3. An appeal was preferred....
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....being sold at Delhi, by defendant no. 3, who is carrying on business and working for gain in Delhi. The plaintiff claims that the cause of action has therefore, arisen within the territorial jurisdiction of this Court. 7. The defendant no. 1, FINA Europe S.A., a company incorporated under the laws of Belgium. Defendant no. 2, FINA India Petroleum Pvt. Ltd. is a company incorporated under the Companies Act, 1956 having its registered office in Mumbai, and is the subsidiary of defendant no. 1 in India. Defendant no. 3 is purportedly retailing and selling the defendants goods at Delhi. The right of defendant no.3 to file its written statement was closed on August 9, 2002. Defendants no. 1 and 2 have filed a common written statement. 8. The answering defendants contend that this court does not have the jurisdiction to entertain or try the present suit, as neither of them are residing or carrying on business within the territorial limits of this Court. The defendants also submit that defendant no. 1 is the prior user of the trademark FINA in relation to petroleum products adopted internationally since the year 1920, and that the instant suit is not maintainable under Sec. 33 of the Tr....
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....unsel for defendant has also agreed that the defendants briefly carried on business in India with respect to petroleum products. Further, in paragraph 11 of the plaint, it is alleged that the defendant no. 3 was retailing in and selling the defedants goods carrying the impugned trade mark at Delhi. However, the defendants in their written statement have not only not denied' the said allegation, but have admitted it as correct. 13. By virtue of the said admission and in accordance with Sec. 58 of the Indian Evidence Act, 1872, the plaintiff is not required to prove any further, the sale of goods carrying the impugned trade mark within the territorial limits of the Court's jurisdiction. In light of the above, I find this issue in favour of the plaintiff. 14. Issues 1 and 2: The plaintiff has contended that it is the registered proprietor of the mark FENA, which it has been using since 1976. The sales and advertisement figures of the plaintiff's mark for the period 1976-2003 have been annexed as Ex-P3, which has also been proven by PW-1 in his affidavit dated 25 October 2005. Further, the Registrar of Trade Marks vide its Order dated March 4, 1997 has held that the plaintiff is the....
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....sis of evidence and cannot be left to the parties alone. The opponents have a prior registered mark, of the word "FENA" under No. 306411 dated 28 June 1975. They have been using the said mark extensively and voluminously and have also advertised the same as is evident from their evidence file under Rule 53 vide paras 8, 9 and 10 of the affidavit of Dalip Jolly. I have equally no hesitation in holding that the rival marks are phonetically, structurally and visually deceptively similar within the meaning of Sec. 2(1)(d) of the Act. The only difference between the rival marks is of the letter "E" in the opponents mark in place of letter "I" in the impugned mark. The different vowels in these rival marks cannot eliminate the fact of deceptive similarity' between the two. On consideration of the aforesaid, the rival marks are held to be deceptively similar and therefore, the impugned mark is mandatorily prohibited in terms of Sec. 12(1) of the Act. Also, on consideration of the evidence of use and reputation enjoyed by the opponents in their prior registered mark is evidently likely to cause deception and confusion during the course of trade and therefore mandatorily prohibited for reg....
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....rayed for an injunction against the use of the defendants' trade mark with respect to lubricants also. The defendants claim to be leaders in petrochemical preparations in the world over as they possess significant trans-border reputation in petrochemical products in different countries, albeit without carrying out business in India. This fact has not been controverted by the plaintiff. In such a circumstance, the goodwill and reputation attached with the parties respective trade mark need to be carefully considered before restraining the use by one of them. 19. The Ld. Counsel for the plaintiff has vehemently contended that the use of the defendants' trade mark, albeit with respect to dissimilar goods i.e. lubricants, will cause confusion in the minds of the purchasing public, who may associate the defendants' lubricants to be arising from the house of the plaintiff's or have close association therewith. In furtherance of this contention, he has relied upon the decision of the Apex Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra Mahindra Ltd. (2002) 2 SCC 147, as well as the decision of this court in the case of Larsen & Toubro Limited v. Lachmi Narain Traders & Ors. 200....
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.... of the Ld. Registrar is only with respect to Class 3 goods and does not extend to goods in other classes. In fact, the Ld. Registrar has also noted that the defendants possess valid registered trademarks in other classes, which alone cannot afford them the convenience of prior registration' vide special circumstance'. Besides, though the plaintiff has duly pointed out that the Registration of the defendants' trade mark FINA' was cancelled for non-renewal with respect to Class 3 goods, the status of the defendants' trade mark in goods pertaining to other Classes are unknown and also untouched by the Order of the Ld. Registrar. Moreover, the defendants goods primarily belong to Class 4 of the Classification of Goods and Services under the Trade Mark Act i.e. Industrial oils and greases, lubricants, dust absorbing, wetting and binding, composition; fuels (including motor spirit) and illuminants; candles and wicks. 23. I am of the opinion that outside of Class 3 goods and services, there are no factors of confusion, as observed in the Mahendra & Mahendra Case (supra), existing between the businesses of the rival parties. The market, trade channels, course of trade and most importantl....