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2001 (8) TMI 1421
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....ffs are seeking a decree of permanent injunction restraining the defendants from using the trade mark "FLEXGRIP" upon or in relation to their writing instruments or other articles of stationery in violation of the plaintiffs, common law rights in the trade mark FLEXGRIP. The defendant no.1 is only a retail outlet which is trading in various stationery items and the defendant no.3 is Sales Office of the defendant no.1. It is infact the defendant no.2 - Sanghvi Writing Industries Limited. Mumbai which is the manufacturer and seller of writing instruments and other articles of stationery. This Company is manufacturing and selling the writing instruments including ball pliant pens, etc. under the trade mark EKCO. 2. The dispute however in the present case is that the plaintiff is the exclusive proprietor of trade mark 'FLEXGRIP' and the defendants have no right to use the word 'FLEXGRIP' in its writing instruments. It may be mentioned that the plaintiff is using for its product the trade mark 'PAPER MATE FLEXGRIP' and the defendants are using the word 'FLEXIGRIP' Along with the word 'EKCO' on its products i.e. 'EKCO FLEXGRIP'. 3. Al....
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..... 2. There would be a confusion in the minds of the public that the goods of the defendants with trade mark 'FLEXGRIP' are that of the plaintiffs and the defendants are thereby trying to pass of its goods as that of the plaintiffs. 3. The plaintiffs have filed case of infringement of trade mark against the defendants in Germany on the same ground. The defendants in that case gave statement that the defendants would not use the trade mark 'FLEXGRIP' in respect of these very goods and thereby accepting the exclusive right of the plaintiffs to use the trade mark 'FLEXGRIP'. In view of this stand of the defendants in a competent Court of law in Germany it was not permissible for the defendants to take contrary stand when the case is filed in India. 5. It may be mentioned at this stage that in an action brought by the plaintiffs against the defendants before the Original Court at Frankfurt (Case no.3/12 O 138/97), the defendants had sent the fax message dated 29th May, 1998 to the said Court, inter alia, stating as under:- We have received the judgment passed by your honour dated 20.4.98, in our ....
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....tation, notwithstanding the fact that India is not a signatory to the Paris Convention and the patents law has not so far been amended in India after signing of GATT. In November 1993 the Delhi High Court restrained two local companies by separate orders of interim injunction from using BENZ and MERCEDES respectively. The restraint order in respect of BENZ involved a company in India engaged in sale of undergarments under trade mark VIP-BENZ in combination with a three-pointed human figure in a ring - characteristic of the three-pointed star device of Daimler Benz AG - with the legend "Germans would be proud of it". While upholding the plaintiff's claim for interim injunction, the High Court made the following observations: "I think it will be a great perversion of the law relating to trade marks and designs, if a mark of the order of the 'MERCEDES BENZ', its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs - not available to any person to apply upon anything or goods. That ....
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....lobe. National protection is no longer adequate to safeguard intellectual property rights which can easily be pirated or copies by nationals of other countries and exploited in their own market or even in international markets. International remedies for such infringement are necessary. The earlier conventions which are administered by the World intellectual Property Organisation and the provisions of the TRIPS Agreement are a step towards such international protection of intellectual property rights. Suitable laws which will protect such rights internationally and give adequate monetary compensation to the owner without creating any undue monopoly in the property can and are being formulated as standards for laws to be enacted by the different countries of the world. These standards reflect the experience of various countries of the world in protecting and enforcing such rights, while taking care of public interest in the availability of new ideas and technologies". 7. It was further submitted that the above article was cited in Caesar Part Hotels and Resorts Inc. versus Westinn Hospitality Services Ltd. 1999 19 PTC 123 (Mad) . Following extract was quoted:- "Thus, it ....
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....other hand, refusal of the interlocutory injunction would cause irreparable injury to the plaintiffs' reputation and goodwill since the trade mark/name 'WHIRLPOOL'. is associated for with the plaintiff no.1 Whirlpool Corporation. These factors which have been relief on for grant of the interlocutory injunction by the trial court indicate that the exercise of discretion was in accordance with the settled principles of law relating to the grant of interlocutory injunctions in a passing off action. The affirmance of the trial court's order by the Division Bench on an appeal reinforces the trial court's view." 10. In another case entitled Allergan Inc. versus Milment of the Industries and others 1999 (19) TC 160 Cal. the Court cited from the case of N.R. Dongre (supra) as follows:- "The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cogni....
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....y, the matter will have to be looked at from the point of view of the purchasing public. If it is possible for a purchaser of the respondent's product in India to do so under the impression that he is buying the appellant's product the respondents as the subsequent adopter of the mark must be restrained from doing so. 12. In Central Industrial Alliance Ltd. versus Gillette U.K. Ltd. reported in 1998 (18) TC Bom. the Court observed as follows:- "In addition, it has to be remembered that in respect of a consumer article such as a safety razor blade publicity does not take place merely by advertisements in India. Such items are advertised in foreign newspapers and magazines and these newspapers and magazines are circulated in India and are freely imported and presumably read. Apart from this, judicial notice may be taken of a large number of Indians who go out temporarily to other countries, mainly to the Middle-East countries, and who, Therefore, had the opportunity to use, the plaintiff's blades. These persons do not permanently settle down abroad and return to India after their two year or three year stay." 13. In the case of Indian Shaving Products Ltd. ....
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....ts, learned counsel quoted the following averment from the plaint: Para-21. "The cause of action first arose at New Delhi in favor of the plaintiffs in the last week of July, 1999, when they first learnt about the impugned use by the defendants of the trade mark FLEXGRIP in India." 2. Another submission advanced by the learned counsel was that the case of trans-border reputation as attempted to be portrayed by the plaintiff was misconceived. Her submission was that no evidence has been filed at the prima facie stays to show any transborder reputation before this Hon'ble Court. It was contended the except for two affidavits and printouts from the website of the plaintiff no other evidence is placed on record and these cannot be considered for deciding the issue on transborder reputation because the website printouts were admittedly taken a month prior to filing of the suit. These printouts refer to the mark FLEXGRIP as PAPERMATE FLEXGRIP ULTRA, PAPERMATE, ETC. The print outs of pages 8-12 are dated 28th July, 1999 and 23rd August, 1999 and the Suit has been filed in December 1999. The affidavits refer to PAPERMATE rather than FLEXGRIP. Reliance was placed....
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....said special lead journals and cannot e said to be extended to the general consumers. It could not be shows that any advertisement was made by the plaintiffs prior to 1996 in any journal or magazine having wide circulation. In absence of same it is not possible to hold that the tooth brush of the plaintiff acquired any trans-border reputation and goodwill ...". 3. It was further submitted that the entire case of the plaintiff was in the realm of passing off and not infringement of trade mark inasmuch as there was no trade mark registered in favor of the plaintiff. In the case of passing off action what was required to be seen as to whether there will be confusion and deception in eyes of the consumer. In the defendant's submission any confusion is obviated by the fact that the defendant has been continuously using the mark since 1993 coupled with the fact that the consumer is well aware of the product EKCO FLEXGRIP and cannot confuse with the plaintiff's LUXOR PAPERMATE FLEXGRIP. The Suit is barred by delay, laches and acquiescence. In the case of Shri Gopal Engineering and Chemical Works versus M/s. POMX Laboratory reported in AIR 1992 Delhi 302 there was un....
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....bmitted that the mark FLEXGRIP is a completely descriptive trade mark inasmuch as a large number of writing instruments which are sold in the market use word like GRIP in relation to pens and other writing instruments, e.g. Montes High Grip, Cello Gripper, etc. Hence, no monopoly can be claimed in a descriptive mark. 5. Learned counsel for, the defendant also attempted to take the aid of Section 33 of the Act by contending that the defendants use of FLEXGRIP is prior to the use of the plaintiff's trade mark FLEXGRIP in India. It was submitted that in the application dated 19th January, 1995 filed by the plaintiff for registration of this trade mark, the plaintiff has itself stated "proposed to be used" which shows that till 1995, that is the date of application, this trade mark has not been used by the plaintiff's in India. On the other hand, the defendant had produced documentary evidence (invoices filed at pages 5-116 of the defendants documents) to show that defendants had been using FLEXGRIP since 1993. 6. Explaining the circumstances in which decree was passed by the German Court it was submitted that the undertaking given by the defendant before the ....
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....t the plaintiffs are using the trade mark 'LUXOR PAPER MATE FLEXGRIP'. Therefore, it is not a case where the trade mark of the plaintiffs or the defendants consist of only one word, namely, 'FLEXGRIP'. In that eventuality position would have been different as it would have been a case of FLEX GRIP versus FLEXGRIP. However, when complete trade mark adopted by the two parties is compared in totality confusion seems to be unlikely. While taking this opinion one is also influenced by the fact that the word 'FLEXGRIP' is descriptive in nature because of the use of the word descriptive in nature because of the use of the word GRIP that too used in relation to pens and other writing instruments. No doubt the fusion of two words namely, FLEX and GRIP and joining them together may become a distinctive word when this aspect is to be considered in isolation. However, looking into this aspect along with other relevant factors as mentioned above, it does not appear to be a case of creating confusions in the minds of the public. Here it would also be relevant to mention that the defendant no.2 is laos an established Company which has made strides in this particular trade,....
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....is form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated.is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action it the uncertainty were resolved in his favor at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weight one need against another and determine where the 'balance of convenience' lies." The interlocutory remedy is intended to preserved in status quo, the rights of parities which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprises or whether he has already been doing so in which latter case c....
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.... When we are examining the case of interim injunction, the well recognised principles for grant or refusing to grant such injunction at this stage would have laos to be borne in mind. Keeping in mind the salient aspects of this case namely: 1. The present is a case falling in the realm of passing of and not infringement of trade mark. 2. The trade names of the products of the parties to be compared are 'LUXOR PAPER MATE FLEXGRIP' versus 'EKCO FLEX GRIP' and not FLEXGRIP alone. 3. The word 'FLEX' and 'GRIP' are descriptive words. 4. It was unlikely that consumers would be confused when the two marks 'EKCO FLEXGRIP' and 'LUXOR PAPER MATE FLEXGRIP' are compared. 5. Particularly when the defendant no.2 is also an established Company using the trade mark EKCO in respect of it s products and in view of the good-will it enjoys that word EKCO used along with FLEX GRIP would be sufficient to distinguish its product from that of the plaintiff. 6. The defendant no.2 is using the trade name EKCO FLEXGRIP in respect of two of its products only out of more than 20 products marketed b....