The Delhi High Court while deciding whether the marks are deceptively similar or not to adjudicate whether the defendant should be restrained or not opined that the statutory and common law right in trademark is not dependent on the value that has been ascribed by the party. The important thing is that the party should be able to prove the registration for the said mark.
Brief Facts:
The Plaintiff alleged that in the year 1996 the firm named ‘M/s M.T. Engineering Works’ started that dealt in the business of manufacture and sale/supply of bath fittings. The trademark called ‘Corsa’ was applied for registration but it got treated as abandoned as a reply to one opposition could not be filed. Pursuant to this in 2004, another firm was opened named ‘M/s. M. Sons Engg. Works’ and a fresh application for the same trademark ‘Corsa’ was filed claiming user since 1998 and the trademark was successfully registered.
The Plaintiff then asserted that the trademark was assigned to one Mr. Naeem Ahmed who had started a firm under the name of ‘M/s Future Bath Products’ and accordingly Mr. Naeem Ahmed became the registered proprietor of the said trademark in 1998.
Sometime around 2017, the Plaintiff company was incorporated, and vide an assignment deed they acquired the proprietorship of the said trademark ‘Corsa’ from Mr. Naeem Ahmed and the same as allowed by the trademark registry.
It was the case of the Plaintiff that he is the original adopter and user of the artistic work and that the mark has been in use since 1998 through predecessor-in-interest. It was contended by the Plaintiff that enviable goodwill and reputation have been acquired and the products are being sold at different interactive websites using the said trademark. It was submitted by the Plaintiff that through the sales team it came to the knowledge of the Plaintiff that Defendant No.1 who is engaged in the business of manufacturing and sale of sanitary ware products is selling his products under the name ‘Corza’ and has used various websites to target the customers of the Plaintiff and general public as well. The mark ‘Corza’ was granted registration in 2017 in a different class than that of the Plaintiff and the application for the said mark in the same class as the plaintiffs have been opposed by the Plaintiff.
Therefore, the Plaintiff has filed this application to restrain the defendant from using the mark “Corza” which is identical/deceptively similar to the mark of the plaintiff i.e., “Corsa”.
Contentions of the Plaintiff:
It was contended by the Plaintiff that no action has been taken so far as the goods under the name ‘Corza’ are not sold in the open market. The Plaintiff also argued that the Defendant No.1 is a user of mark ‘Corza’ only since 2014 as registration was done in 2014. It was argued that the Defendant No.1 is a separate partnership firm and therefore, the name ‘Corza’ cannot be transferred in the name of Defendant No.1 as there is nothing on record to prove this.
Contentions of the Defendants:
The Defendants contended that the mark ‘Corza’ was created by the Defendant No.2 for the firm called ‘M/s. Pan India Tiles Gallery.’ It was contended that the mark has been extensively used since 1999 by the predecessor firm of the Defendant No.1 and has gained wide popularity in the South Indian market. It was argued that the mark ‘Corza’ was used by ‘M/s. Pan India Tiles’ since 1999 and that the Defendant No.1 is the prior adopter of it. It was also contended that an application has been filed with the registry seeking rectification of the registration granted to the trademark of the Plaintiff. It was further argued that the Defendants are operating in South India only whereas the Plaintiff’s target area is Delhi-NCR and even the goods dealt with by both the parties are different as the Defendant is engaged in water closets and allied products.
Observations of the Court:
The Delhi High Court observed that the marks are phonetically and visually similar to each other. It was noticed that applying the test of ‘average intelligence and imperfect recollection’ the similarity of the idea in the two marks is likely to confuse the minds of the general public.
With respect to the Plaintiff valuing its trademark only at Rs. 4000 the Court opined that the statutory and common law right in a trademark is not dependent on the value ascribed by the party. The relevant consideration is that the plaintiff should be able to make out a case based on the registration of the mark.
Further, the High Court observed that the contention of the Defendants was based on the alleged use of the mark ‘Corza’ by ‘M/s. Pan India Tiles’ cannot be accepted as there was no assignment or license to prove the same.
The Court remarked that for defendants to claim the exception to infringement will have to prove acquiescence for a continuous period of 5 years and in the present case it is proved that the Plaintiff firstly, opposed the registration and secondly, came to know about the mark later as it was in a different class. Therefore, the Court opined that it cannot be said that the Plaintiff has acquiescence in the use of the mark ‘Corza’.
The decision of the Court:
The Delhi High Court, therefore, restrained the Defendants from using the mark ‘Corza’ for the goods falling under class 11 but since the Defendants had valid and subsisting registration for class 19 that was left free for the Defendants to use.
Cause Title: Future Bath Products Pvt. Ltd. V. Corza International & Ors.
Bench: Hon’ble Mr. Justice Navin Chawla
Decided on: November 04th, 2022
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