Bombay High Court
Ramnish Verma vs The Haddad Apparel Group Ltd on 7 October, 2025
2025:BHC-OS:18067
IA 752-2024.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 752 OF 2024
IN
COMMERCIAL IP SUIT NO. 247 OF 2023.
1) Ramnish Verma, ]
Adult, Indian Inhabitant residing ]
at 402, Mayfair Building, Kane ]
Road, Bandstand, Bandra (West), ]
Mumbai-400 050, ]
Maharashtra. ]
]
2) Finesse Fashions Pvt. Ltd. ]
A Private Limited Company registered ]
under the Companies Act, 1956 ]
having its registered office ]
at Unit No. 10, Ground Floor, ]
Premsons Industrial Estate, ]
Tahira Compound, Caves Road, ]
Jogeshwari (East), ] ...Applicants/
Mumbai-400 060, Maharashtra. ] Org. Plaintiffs.
In the matter between :
1) Ramnish Verma, ]
Adult, Indian Inhabitant residing ]
at 402, Mayfair Building, Kane ]
Road, Bandstand, Bandra (West), ]
Mumbai-400 050, ]
Maharashtra. ]
]
2) Finesse Fashions Pvt. Ltd. ]
A Private Limited Company registered ]
under the Companies Act, 1956 ]
having its registered office ]
at Unit No. 10, Ground Floor, ]
Premsons Industrial Estate, ]
Tahira Compound, Caves Road, ]
Jogeshwari (East), ]
Mumbai-400 060, Maharashtra. ] ...Applicants.
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Versus
1) The Haddad Apparel Group Ltd., ]
A Corporation duly organized and ]
existing under the Laws of ]
the State of New York, ]
United States of America ]
having its Indian office ]
at 68, Institutional Area, ]
Sector- 44, Gurugram, ]
Haryana 122 002 and ]
its E-mail Ids as ]
[email protected]; ]
[email protected]. ]
]
2) RJ Corp Ltd., ]
A Company registered under ]
the Companies Act, 1956 ]
having its place of business ]
at Shop No.S-16, 2nd Floor, ]
Oberoi Mall, Off., Western Express Highway, ]
Goregaon (East), ]
Mumbai-400063, Maharashtra ]
and its E-mail Id. As ]
[email protected]. ]
]
3) Varun Jaipuria, ]
An Adult, Inhabitant, ]
the Director of RJ Corp Ltd. ]
having his place of business ]
at E-449, 3rd Floor, DLF Mall of India, ] ...Respondents /
Sector-18, Noida-201301, Delhi. ] Org. Defendants.
------------
Mr. Virag Tulzapurkar, Senior Advocate along with Mr.Hiren Kamod, Mr. Mahesh
Mahadgut, Mr. Shildendra Thathe, Mr.Kaivalya Shetye, Ms. Neha Joglekar and
Mr. Prem Khullar for the Plaintiff.
Dr. Veerendra Tulzapurkar, Senior Advocate along with Ms.Hemlata Marathe
and Mr. Vaibhav Khanna i/by Jehangir Gulabbhai and Bilimoria and Davawala
for Respondent.
------------
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Coram : Sharmila U. Deshmukh, J.
Reserved on : August 14, 2025.
Pronounced on : October 7, 2025.
Uploaded on : October 7, 2025.
Judgment :
1. This is an action for infringement of trade mark and passing off.
The case of the Plaintiffs is that the Plaintiff No.1 is the registered
proprietor of trade mark "ROOKIES" and various "ROOKIES" formative
trade marks of which the word "ROOKIES" is the leading and essential
features. The registered domain name i.e., "https://rookiesjeans.com"
also contains the trademark.
2. The Plaintiff No.1 is one of the shareholder and director of
Plaintiff No.2 and Plaintiff No. 2 is the permitted user of trade mark
"ROOKIES". The Plaintiff Nos.1 and 2 are engaged in the business of
designing, importing, manufacturing, marketing and sale of readymade
garments and all kinds of clothing collection, footwear and ancillary
products for men, women and children and are also engaged in the
business of retailing the said goods through their exclusive brand
outlets as well as multi brand stores under the name and style
"ROOKIES" / "ROOKIES Jeans". The Plaintiffs also have online
presence on their own as well as third party e-commerce websites.
3. In the year 2008, the Plaintiff No.1 adopted the word "ROOKIES"
as its trade mark. The domain name was registered on 1 st November,
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2008. The Plaintiff No.1 applied for and secured registration of the
trade mark "ROOKIES" and ROOKIES formative trademarks under
Class 25 and subsequently also secured registration under Class 35, the
relevant details are set out in paragraph 6(i) of the plaint. The earliest
registration of the mark "ROOKIES" in class 25 was secured on 22 nd
December 2008 with user claim of 3rd November 2008. The registration
in Class 35 was obtained on 23rd May 2019 with user claim of 3rd
November 2008.
4. The Plaintiffs have also secured registration in Class 25 and Class
35 in Nepal, in Class 25 in Sri Lanka and Bangladesh in the year 2022 -
2023. In so far as country of Hong Kong is concerned, in the year 2018,
the Plaintiffs filed an application for registration of the mark
"ROOKIES JEANS CO/ROOKIES JEANS" in Class 25 and 35, which was
opposed by the Defendant No. 1 vide notice of opposition dated 25 th
January 2019 pursuant to which the Plaintiff did not contest the Hong
Kong opposition.
5. The plaint sets out the wide array of goods marketed under the
trademark "ROOKIES" as well as locations at which the multi-brand
stores and exclusive brand outlets of Plaintiffs are located. It is stated
that the Plaintiffs, as retailer launched their flagship store in Phoenix
Mall in Kurla which led to launching of exclusive brand outlets in major
cities like Raipur, Patna and Gujarat in India. In order to demonstrate
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the goodwill and reputation, the sales figures and promotional
expenses duly certified by the Chartered Accountant are placed on
record. It is submitted that the Plaintiffs brand is endorsed by
celebrities.
6. It is submitted that the Defendant No.3 is the Director of
Defendant No.2 and they are the exclusive franchisee of Defendant
No.1. In the month of March 2019, the Plaintiffs came across an invite-
cum-advertisement by Defendant No.3 announcing the opening of first
"ROOKIE USA" store in India on 23rd March 2019 at a mall in Noida.
Immediately the Plaintiffs issued cease and desist notice to the
Defendant No.3 on 23rd March 2019. The Plaintiffs conducted search of
the records in the Trade Mark Registry which revealed that the
Defendant No.1 has obtained 2 registrations of the mark "ROOKIE" on
11th April 2014 in Class 35 with user claim of proposed to be used.
7. Subsequently, there was correspondence exchanged between
the Plaintiffs and Defendants in which it was stated that the Defendant
No.1 had obtained trade mark registrations for the impugned mark in
Class 18 and Class 35. There were certain talks about amicable co-
existence of parties. The negotiations continued till 1 st August, 2019
going to the extent of Plaintiff No.1 having a meeting in New York with
the Defendant No.1. However, there was no fruitful outcome of said
negotiations.
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8. It is submitted that it is only after the negotiations failed that
action was initiated by the Plaintiffs, the first step being filing for
rectification of the registered trade mark as being contrary to the
provisions of Section 11 of the Trade Marks Act, 1999. The counter
statement was not filed within the stipulated period and came to be
filed at a belated stage, on 1st December 2022. The Defendants
subsequently filed 2 more applications for registration of trade mark
"ROOKIE USA" in Class 35 on 7 th December 2022 with a user claim of
24th March 2019.
9. The Defendants in affidavit-in-reply pleaded acquiescence
contending that despite being aware of the Defendants, the Plaintiffs
allowed four years to pass before filing of present suit resulting in the
Defendants steadily growing and expanding their business under the
"ROOKIE USA" brand across India. The adoption of the trade mark by
the Defendant No.1 is bona fide. In the year 2011, the Defendant No. 1
adopted and created retail concept under the name "ROOKIE USA"
which is kids only multi brand premium retail destination with
emphasis on apparel, accessories and footwear and having global
presence. To demonstrate the enormous goodwill and reputation that
Defendant No.1 enjoys, the sales figures are placed on record. It is
contended that the Defendant No.1 has obtained registration for its
"ROOKIE" marks in several countries with its earliest registration
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being in USA in Class 35 filed on 21st September 2011. In India, the
Defendant No. 1 has secured registration of the trademark "ROOKIE"
in Class 18 and 35 which has been registered since 11 th April 2014 and
have also filed 2 more trade mark applications for registration of
"ROOKIE" mark in Class 35 with user claim since 24 th March 2019. The
launching of the store in March, 2019 and the subsequent
correspondence and meeting between the parties is admitted. It is
further contended that the Plaintiff No.1 as prior proprietor of
"ROOKIES" mark in India, used its leverage to attempt to compel the
Defendant No.1 to let him enter the market where the Defendant No.
1 has strong presence and to sell the Plaintiffs' brand through
established chain of the Defendant No.1. It is submitted that if the
same was permitted, the Defendant No.1 would have lost all its
progress and market dominance and would have amounted to allowing
the Plaintiff No. 1 to take advantage of its goodwill and reputation to
sell its goods and establish its market in other countries which was not
acceptable which resulted in failing of settlement talks. The filing of
rectification application by the Plaintiffs has been admitted. It is
submitted that the Defendant No.1 is the prior adopter and registered
proprietor of "ROOKIE" mark in India for retail services in Class 35 as
the same was registered in 2014 whereas the Plaintiff No.1's mark was
registered in the same class in 2019. The priority of Plaintiffs, if any, is
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in respect of goods in Class 25 and not in Class 35 as the Plaintiff's first
store was opened in February, 2020 i.e. one year after the opening of
Defendant's store.
10. In rejoinder, it is stated that the Defendant has obtained
registration by fraud and the registration is ex facie illegal, fraudulent
and one that shocks the conscience of the Court. It is contended that
the Defendants have secured registration in Class 25 in countries
abroad, however, with mala fide intent applied for registration of the
impugned mark in Class 35 being fully aware that their application in
Class 25 is bound to be refused on account of Plaintiff's mark. It is
submitted that the Defendant No.1's official website
www.rookieindia.com does not contain the word "USA" which
demonstrates the mala fide intention of Defendants to come as close
as possible to the Plaintiff's mark "ROOKIES" and it is difficult to
distinguish between the Defendants domain name and the Plaintiffs
domain name. It is submitted that the Plaintiffs believed that
registration in Class 25 was sufficient to carry on their business,
however in order to avoid any anomaly in future, the Plaintiffs filed its
application in Class 35 which is only ancillary to Class 25. It is
submitted that the Plaintiff's first retail outlet was opened in Raipur in
India in 2017 and the Defendant's agreement with Indian franchise R.J.
CORP is dated 1st April 2018. It is further submitted that the Plaintiffs
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opened its showroom in February 2020 just before the Covid lockdown
started and after easing of restrictions, need of the hour was to kick
start the business by opening more outlets leading to some delay in
filing the present suit.
SUBMISSIONS:
11. Mr. Tulzapurkar, learned Senior Advocate appearing for the
Plaintiffs submits that the Defendants mark "ROOKIE USA"
prominently displays the word "ROOKIE" and the word "USA" is in
negligible font. He submits that the Plaintiffs' mark is reputed mark
and its product under its mark are retailed in multi-brand and exclusive
outlets and points out the distributorship agreements. He submits
that the Plaintiffs application for registrations in Hong Kong in April,
2018 came to be opposed by the Defendant No.1. Drawing attention
to the notice of opposition filed by Defendant No.1, he submits that
the stand of Defendant No.1 in present proceeding is at variance from
the stand taken in the opposition proceedings and therefore doctrine
of prosecution history estoppel will apply. He would further submit
that admittedly the Defendants mark was conceived in the year 2011
and the Plaintiffs have produced substantial material on record to
demonstrate use of their trade mark in India since the year 2008. He
submits that there is no question of delay as after the cease and desist
notice was issued, in order to arrive at an amicable settlement, the
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parties were negotiating and it is only in August 2019 that the
negotiations failed.
12. He would further submit that the Defendants do not have
registration in Class 25 in India and its registration is restricted to Class
18 and Class 35 for which rectification proceedings are pending. He
would further submit that in the affidavit-in-rejoinder, the Plaintiffs
have pleaded that the first retail store was opened in 2017 which has
not been disputed. He submits that the Defendants have admitted
that the Defendant No.1's registration is of the year 2014 in India on
the proposed to be used basis and its first retail store opened on 23 rd
March 2019 and therefore Defendants are late entrant. He submits
that this is a fit case where this Court can go beyond registration of the
Defendants mark as the Lupin's principles stand satisfied and the
Defendants mark could not have been granted registration.
13. Pointing out to the registration of Defendant No.1's trade mark,
he submits that the Defendant's registration in Class 35 covers articles
of clothing which overlaps the registration of Plaintiffs' trade mark in
Class 25. Pointing out to the registration certificates, he submits that
the Defendant No.1's registration in India does not mention the word
"USA" and the Defendant No.1 has adopted the stand-alone mark
"ROOKIE". He submits that it is only on 7 th December 2022, that the
Defendant sought registration of the trade mark "ROOKIE USA" in
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respect of Class 35 whereas the earlier registration was for the word
mark "ROOKIE". He submits that in the counter statement to the
rectification application filed by the Plaintiffs, the Defendants have
contended that "ROOKIE" is a common word and none can claim
monopoly, which the Defendants are estopped from claiming as it
itself sought registration of the said mark.
14. He submits that there is no question of acquiescence in the
absence of any positive act on the part of Plaintiffs and the adoption of
the mark being dishonest adoption, the defence of acquiescence is not
available. He submits that the Defendants have not taken search in the
Registry though they were aware of use of the mark since 2008 by the
Plaintiffs and use of the mark is at the Defendant's own peril. He
submits that the Defendant's international presence in the year 2011
or its international sales is irrelevant and the actual user of Defendant
No.1 in India is in the year 2019. He submits that use of the identical
mark in respect of identical goods is bound to lead to confusion and
adversely affect the Plaintiff's sale and points out Section 29(2) of the
Trade Marks Act to contend that in the present case the Plaintiff's
goods and Defendant's services are related and have to be viewed in
commercial and business sense.
15. He submits that insofar as the action for passing off is
concerned, the Plaintiffs are prior registered proprietors and users of
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their trade mark since 2008 and as of 2019, when the Defendants
started using their mark in India, Plaintiffs had done sales of over Rs.
146 crores. He submits that for the purpose of considering the issue of
passing off, the registration of rival mark as also the common field of
activity is irrelevant. He submits that the rival trade marks are identical
and the Plaintiffs have placed material to demonstrate goodwill and
reputation. He submits that the rival trade marks are being used in
relation to similar/cognate/allied goods and likelihood of
misrepresentation and likelihood of injury to the Plaintiff's goodwill
and reputation is inevitable. In support, he relies upon following
decisions :
Schering Corporation v. Kilitch Co. (Pharma) Pvt. Ltd1.
Abdul Rasul Nurallah v. Regal Footwear2
Mahyco Pvt. Ltd v. Seamons Seeds Pvt. Ltd3.
Allied Auto Accessories Ltd. v. Allied Motors Pvt. Ltd4.
Eagle Potteries Pvt.Ltd. v. Eagle Flask Industries Pvt. Ltd 5.
Manu Kagliwal v. Mayo Foundation for Medical Education
and Research6
Indchemie Health Specialities Pvt. Ltd. v. Intas
Pharmaceuticals Ltd7.
Kores (India) Limited v. Whale Stationery Products Ltd8.
Reed Elsevier Properties Inc. v. Best Media Associates
1 1990 SCC OnLine Bom 425.
2 2023 SCC OnLine Bom 10.
3 This Court in IA (L) No. 33512 of 2024 IN COM IP (L) No. 26353 of 2024 dated June 24, 2025.
4 2002 SCC OnLine Bom 1138.
5 1992 SCC OnLine Bom 490.
6 2017 SCC OnLine Bom 9898.
7 2017 SCC OnLine Bom 10127.
8 2007 SCC OnLine Bom 1076.
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(India) Pvt. Ltd9.
RPG Enterprises Ltd. v. Riju Ghoshal10
16. Per contra Dr. Tulzapurkar, learned Senior Advocate appearing
for the Defendants submits that the Defendant No.1 has been granted
registration in Class 18 and Class 35 and the Defendant's services are
not covered by the Plaintiff's registration. Drawing attention of this
Court to Sections 18, 23 and 28 of the Trade Marks Act, he submits that
exclusive right to use the trade mark is given only in relation to the
goods and services in respect of which the trade mark is registered,
which registration in the Plaintiff's case is limited to Class 25. He
submits that Section 29(2)(a) and (b) of the Trade Marks Act, 1999
refers to the similarity of goods and the aspect of confusion and
association can be considered only after it is ascertained that there is
similarity of goods, which issue will be decided in the rectification
application.
17. He submits that ex facie neither the goods in Class 18 or the
services in Class 35 are similar to the Plaintiff's goods. He would
further submit that Plaintiff's registration in respect of the goods
cannot prevent the Defendants from using the mark in respect of
services as the goods and services are distinct and separate. He
9 2009 SCC OnLine Bom 1742.
10 2022 SCC OnLine Bom 626.
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submits that there cannot be any prima facie finding on aspect of
similarity which will require evidence to be led unless the same is self-
evident. He submits that the Defendant No. 1 being the registered
proprietor cannot be restrained as Section 30(2)(e) and Section 28(3) of
the Trade Marks Act protects the use of the mark by the registered
proprietor. He submits that the Lupin's principles leaves a very small
window for going beyond registration and in the present case, the
Plaintiffs have failed to discharge the heavy burden cast upon them.
18. Pointing to the provisions of Section 12 of the Trade Marks Act,
he submits that the statutory provisions recognises more than one
proprietor. He submits that the Defendant No.1 had adopted the mark
in the year 2011 outside India where the Plaintiffs had no presence.
He submits that word "ROOKIE" is a dictionary word and not an
invented word. He submits that Plaintiff's registration in Class 35 is
subsequent to the registration secured by Defendant No.1. He would
further submit that there is no evidence to show prior user of Plaintiffs
of its mark in Class 35. He submits that the exclusive brand outlet was
opened by the Plaintiffs only on 6th February 2020 and there is no
material produced by the Plaintiffs to substantiate that the Plaintiff's
first retail outlet was opened in Raipur in 2017. He submits that the
said averment does not find place in the plaint or in the cease and
desist notice as regards Plaintiff's prior user and it is necessary for
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evidence to be led in order to establish continuous prior user. He
submits that the suit has been filed after 4 years despite being aware
about the Defendant's existence and therefore there is acquiescence.
In support, he relies upon following decisions :
American Home Products Corporation v. Mac Laboratories
Pvt. Ltd11.
C. & T. Harris (Calne) Ld. v. F. S. E. Harris12
British Sugar Plc v. James Robertson & Sons Ltd13.
Zippo Trade Mark14
In the matter of an application by Ladislas Jellinek for the
registration of a Trade Mark15
Raleigh International Trade Mark16
Harding v. Smilecare Limited17
M/s. Parry & co. v. M/s. Perry & Co18.
Lupin Ltd. v. Johnson & Johnson19
Williams's Ld. v. Massey Ld20.
Smith Bartlet and Co. v. the British Pure Oil Grease and
Carbide Co. Ltd21.
Balkrishna Hatcheries v. Nandos International Ltd22.
19. In rejoinder, Mr. Tulzapurkar would submit that the Trade Marks
Act is a territorial enactment and therefore adoption of the mark in the
11 1986 (1) SCC 465.
12 [1934] 51 R.P.C. 98.
13 1996 R.P.C. 281.
14 [1999] R.P.C. 173.
15 [1946] R.P.C. 59.
16 [2001] R.P.C. 11.
17 [2002] F.S.R. 37
18 AIR 1963 Mad 460.
19 AIR 2015 Bom 50.
20 [1911] 28 R.P.C. 512.
21 [1934] 51 R.P.C. 157.
22 2007 SCC OnLine Bom 449.
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year 2011 in USA by the Defendant is irrelevant whereas the Plaintiffs
adopted the mark in India in the year 2008. He submits that the
Defendants' registration was in the year 2014 whereas the mark was
used in the year 2019 and the Plaintiffs are the prior users and the
registered proprietor of the trade mark. He submits that it is not
necessary that evidence be led and prima facie case can be considered
for the purpose of grant of injunction. He would submit that the
classification of goods and services are for administrative purposes and
goods falling in different classes can be held to be similar. He would
point out the sales invoices of Defendants which shows sale of
garments along with backpacks and would contend that Class 25 goods
are being offered by the Defendants from their stores in India. He
would further submit that there is no pleading in the reply that their
goods in Class 18 are different from Plaintiffs' goods in Class 25.
20. He would further submit that there is no argument advanced by
Dr. Tulzapurkar on the aspect of passing off. He would submit that
under the provisions of Section 2(3) of the Trade Marks Act, the goods
and services are associated with each other if it is likely that the goods
might be sold and services might be provided by the same business and
therefore there is no difference between the sale of goods and
rendering of services.
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21. He points to the provisions of Section 16 of the Trade Mark Act
which provides for registration of the trade mark as associated trade
mark and submits that Section 16(2) refers to goods and services which
are associated. Mr. Tulzapurkar would tender additional documents
and submit that the application of Defendant No.1 for registration of
"ROOKIE USA" label on 7th December 2022 has been objected under
Section 11(1) of the Trade Marks Act.
REASONS AND ANALYSIS.
22. There have been no arguments advanced and rightly so that the
rival marks are not identical and /or deceptively similar . The Plaintiff's
mark is "ROOKIES" whereas the Defendants mark is "ROOKIE"
without alphabet "s". The Defendants other mark is "ROOKIE USA"
and the manner in which the mark is used indicates that prominence is
given to the word ROOKIE and the word USA is in negligible font. The
issue of whether the marks are identical/deceptively similar does not
arise in the present case. Considering the facts and the submissions
advanced, broadly the issues which will require determination are:
[a] Whether there is similarity between the Plaintiffs'
goods and the Defendants goods/service which is likely to
cause confusion and likelihood of association so to constitute
infringement as contemplated under Section 29(2) of Trade
Marks Act, though the rival marks are registered in different
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class.
[b] Whether the Defendant No 1 is the prior adopter and
user of its registered trade mark "ROOKIES" in India, which
use cannot be restrained by the Plaintiffs.
[c] Whether the doctrine of prosecution history
estoppel would operate against the Defendants in view of the
stand taken by the Defendants while opposing the plaintiff's
registration of its mark "ROOKIES" in Hong Kong.
[d] Whether in the facts of the present case, the
registration of Defendant No.1's mark in Class 18 and Class 35
in India is ex facie illegal or fraudulent or such that shocks the
conscience of Court so as to satisfy the Lupin principles.
23. The Plaintiffs as well as the Defendant No.1 are the registered
proprietor of their trade marks i.e. "ROOKIES" vs "ROOKIE"
respectively. Let us first re-capsulate the relevant dates of use and
registration to ascertain the aspect of prior user. The earliest
registration of the Plaintiffs' trade mark "ROOKIES" in Class 25 was
secured in the year 2008 in respect of "readymade garments for men,
women and children, undergarments and clothing of all kinds including
the goods, shoes and slippers, all being goods included in Class 25"
with user claim of 3rd November, 2008. The registration of the
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Plaintiff's trade marks "ROOKIES" and "ROOKIES JEANS" in Class 35
was applied on 23rd May 2019 in respect of retail stores, online stores,
retail and wholesale services for garment, clothing and footwear,
online marketing and advertising services, import-export services,
marketing and distribution services for garments, clothing and
footwear" with user claim of 3rd November, 2008.
24. In so far as the Plaintiff's claim of launching of exclusive outlet in
Raipur, India in the year 2017 is concerned, the averment did not find
place in the plaint and came on record by way of Affidavit in rejoinder.
To substantiate the claim, there is no material placed on record and on
the contrary, the pleading is that on 6th February, 2020, the Plaintiffs
launched its flagship store in Phoenix Mall, Kurla which led to launching
of exclusive brand outlets subsequently. The registration of the
Plaintiffs mark "ROOKIES" in the year 2008 in Class 25 and the use of
the mark since the year 2008 is prima facie demonstrated and there is
no debate about the same.
25. Coming to the Defendants registration, the Defendant No.1
secured registration of its mark "ROOKIE" in India on 11th April, 2014 in
Class 18 in respect of "All purpose sports and athletic bags, book, carry
on duffel, diaper, gym, tote and travel bags, fanny packs and waist
packs; backpacks; knapsacks;purses; leather key chains; wallets;
umbrellas" and registration of the mark "ROOKIE" in Class 35 was
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obtained on 11th April, 2014, both with user claim of proposed to be
used. Despite filing of reply Affidavit running into 1500 pages, the
Defendant No.1 has neither pleaded nor brought to the notice of the
Court any document which will disclose the date of user of the
registered trade mark "ROOKIE" in India in respect of goods/services
in Class 18 and Class 35. There are no sale invoices regarding sale of
goods under Class 18 or commencing of services in Class 35 under the
trade mark "ROOKIE". The sales figure at Exhibit "E" is the global
sales of the Defendant No.1 of its products under the trademark
"ROOKIE USA". The documents from Page 1050 to 1062 of the reply
Affidavit indicates that the retail stores outside India were launched
under the trade mark "ROOKIE USA". Prima facie the Defendant No.1
did not put to use the registered trademark "ROOKIE" in respect of
goods under Class 18 or services under Class 35. The material on record
prima facie indicates that the Defendants launched its retail store on
23rd March, 2019 in India under the trade mark "ROOKIE USA", which
mark was unregistered in India. The application for registration of the
trade mark "ROOKIE USA" in Class 35 was made only on 7 th December,
2022 and is pending opposition.
26. The effect of a registered trademark remaining dormant was
considered by the Hon'ble Apex Court in Neon Laboratories Ltd. v.
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Medical Technologies Ltd23, where the Hon'ble Apex Court held as
under:
"We must hasten to clarify that had the appellant-defendant
commenced user of its trade mark ROFOL prior to or even
simultaneous with or even shortly after the respondent-
plaintiffs marketing of their products under the trade mark
PROFOL, on the appellant-defendant being accorded
registration in respect of ROFOL which registration would
retrospectively have efficacy from 19-10-1992, the situation
would have been unassailably favourable to it. What has
actually transpired is that after applying for registration of its
trade mark ROFOL in 1992, the appellant-defendant took no
steps whatsoever in placing its product on the market till
2004. It also was legally lethargic in not seeking a curial
restraint against the respondent-plaintiffs. This reluctance to
protect its mark could well be interpreted as an indication
that the appellant-defendant had abandoned its mark at
some point during the twelve-year interregnum between its
application and the commencement of its user, and that in
2004 it sought to exercise its rights afresh. It would not be
unfair or fanciful to favour the view that the defendant's-
appellant delayed user was to exploit the niche already
created and built-up by the plaintiffs-respondent for
themselves in the market. The "first in the market test" has
always enjoyed pre-eminence. .."
27. The non user by the Defendant No.1 of the registered trade
mark "ROOKIE" has the effect of tilting the scales in favour of the
Plaintiffs by treating the Defendant No.1's mark as abandoned. The
Defendant No.1 secured registration of its mark "ROOKIES" in the year
2014 and till date has not shown the use of the mark in India. Taking
guidance from the decision of Hon'ble Apex Court, the non user of the
registered mark can well be interpreted to mean that the Defendant
No.1 has abandoned its registered mark. On the other hand, the
23 (2016) 2 SCC 672.
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Plaintiffs have adopted, used and secured registration of its mark since
the year 2008. The registration of the trade mark in the year 2011
cannot enure to the benefit of the Defendant No.1 to resist the claim
of infringement by seeking protection of Section 28(3) read with
Section 30(e) of the Trade Marks Act. It would cause great prejudice
and loss to the Plaintiffs, if the Defendant No.1 having failed to put to
use its registered trade mark from the year 2011 is permitted prima
facie to resist the injunction by relying on the rights granted under the
Trade Marks Act, by mere fact of registration of its mark.
28. Proceeding ahead by accepting as subsisting the statutory rights
of the Defendant No.1 by virtue of registration, let us test whether
there is infringement of the Plaintiff's registered trade mark by the
Defendants. The Plaintiffs seek an injunction restraining the
Defendants from using the impugned trade mark/trading style/domain
name "ROOKIE" or using any other trade mark/trading style/logo etc
which is identical with and/or deceptively similar to the Plaintiff's
registered trade mark "ROOKIES" which will include the unregistered
trade mark "ROOKIE USA". Section 29 of Trade Marks Act, governs
the infringement of registered trade mark by a person who is not the
registered proprietor. In the present case, the Defendant No.1 is the
registered proprietor of the trade mark "ROOKIE" which is not put to
use and the mark put to use is "ROOKIE USA" which is unregistered.
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The first in the market test has always enjoyed pre-eminence. The
rights of a prior user will normally override those of the subsequent
user even though it had been accorded registration of its trade mark
and particularly when the registered trade mark is not put to use.
29. Section 29(1) of the Trade Marks Act contemplates infringement
of the registered mark if the impugned mark is "identical with or
deceptively similar to" the registered trade mark and is used in relation
to the goods and services for which the trademark has been registered.
Under Sub-Section (2)(a) of Section 29, infringement takes place where
the impugned mark is identical with the registered trademark and the
goods or services for which the impugned mark is being used is similar
to the goods and services covered by the registered mark. Sub-Section
(2)(b) of Section 29 contemplates a situation where the impugned mark
is similar to the registered mark and the goods and the services for
which is used is identical with or similar to the goods and services for
which the registered mark is used. Under Sub-Section (2)(c) of Section
29, infringement occurs where the impugned trade mark is identical to
the registered trade mark and the goods or services for which the
impugned mark is used is also identical to the goods/services covered
by the registered trade mark.
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30. For infringement to result by use of the impugned trademark, it
is necessary in eventualities contemplated by Section 29(2), that the
use of the impugned trade mark "is likely to cause confusion on the
part of the public" or "is likely to have an association with the
registered trade mark". The statutory provisions of Section 29(2) of
Trade Marks Act mandates similarity of the goods and services for the
confusion or likely association to take place.
31. Dr. Tulzapurkar would emphasis upon the factum of registration
of the Defendant No.1's mark in Class 35 to contend that services
cannot be compared with goods and therefore there is no case of
infringement. The said submission overlooks the fact that the
Defendant No.1 has obtained registration in Class 18 as well. It is by
now well settled that classification of the goods and services is not the
criterion for deciding the issue of similarity of goods and services.
Section 7 of the Trade Marks Act provides for classification of goods
and services and that the Registrar shall classify the goods and services
into, as far as may be in accordance with, international classification of
goods and services for the purpose of registration of trade marks. Sub-
Section (2) of Section 7 further provides that any question arising as to
the class within which any goods or services falls shall be determined
by the Registrar whose decision shall be final. Sub-Section (1) of
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Section 7 uses the expression "as far as may be" which indicates that
the classification cannot be the sole criterion for deciding whether the
goods are similar or not and the fact that despite international
classification of goods and services being required to be adhered to,
where any issue arises as to the class within goods and services falls, it
is the determination by the Registrar whose decision is final. If one
looks at the classification lists, there are many articles in different Class
which would be overlapping and there is probability that the same
article would fall in one class as well as in the other class. The position
in law qua the classification list is well settled. In case of Allied Auto
Accessories Ltd. vs. Allied Motors Pvt. Ltd (supra), the Learned Single
Judge of this Court held that the well settled position is that the
guidelines or classification lists which are published by the Trade Mark
Registry are only administrative guidelines and do not constitute
binding determinations on the proper classification of goods.
32. The comparison between the articles included in Class 18 and
Class 25 shows that Class 25 includes clothing, footwear etc, whereas
Class 18 articles covers bags, purses, wallets etc. In the case of Corn
Products Refining Co., vs. Shangrila Food Products Ltd.,24 it has been
held that cognate goods/services can be described inter alia as goods
or service which have trade connection as in glucose and biscuits which
24 AIR 1960 SC 142
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were rival products in that case. Allied and cognate goods are those
goods which are intended for the same consumer base as they are
complementary to each other. The articles in Class 18 are accessories
to the Class 25 articles and are frequently bought together and would
be retailed through the same shops. The relevant consumer base is
common to both classes and from the aspect of the common consumer,
the articles in Class 18 and Class 25 would pertain to the same trade
sector being complementary to each other. Mr. Tulzapurkar is right in
placing reliance on the sales invoices produced by the Defendants
which shows sale of wearing apparel alongwith backpacks. So also the
social media posts asserts sale of Class 25 goods being offered by the
Defendants from their retail stores. There is no submission canvassed
by Dr. Tuljarpurkar to dispute the trade connection between the Class
18 and Class 35 products. Prima facie there is similarity in goods under
Class 18 and Class 35 as allied/ cognate goods.
33. Coming to the user of the impugned mark "ROOKIE / ROOKIE
USA" in respect of retail stores featuring clothing and accessories
being services offered under Class 35, the comparison would be
between goods on one hand and services on the other hand. Strong
reliance is placed by Dr. Tulzapurkar on the decision of this Court in
case of Balkrishan Hatcheries Vs Nandos International Ltd (supra).
This Court in the said decision held that similarity can be similarity
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between goods and goods and cannot be similarity between goods on
one hand and services on the other. The Learned Single Judge held
that "use of trade mark in relation to goods is distinct from use of the
trade mark in relation to the services". In Balkrishna Hatcherires
(supra), the Plaintiff's products were processed or frozen meat
products and 1st Defendant's service/goods were restaurants/food
outlets, which did not serve frozen meat products and was not in the
business of sale of sauces. It also needs to be noted that the Court
applied the test of similarity by examining the goods and the services
and one of the considerations which weighed with the Court was that
the Plaintiff therein had neither pleaded nor attempted to establish
any similarity between the goods and services. In any event, the
decision of Balkrishan Hatcheries (supra) considered the point of
convergence of goods and services and noted the provisions of Section
2(3) and Section 16 of the Trade Marks Act dealing with associated
goods and services. In para 13, it laid down the requirements to be
satisfied for the goods and services to be associated, which tests stand
satisfied in the present case.
34. Apart from the above, what is so different between the
Plaintiff's products and the Defendants services that there can be no
comparison between the two. The Plaintiffs products i.e. readymade
garments, clothing collection, footwear etc are sold through stores
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which may be owned by third parties and also through their exclusive
outlets, whereas the Defendants sells multi brand children's garments
which may be of different brands. Can the rival products be said to be
so distant and unconnected with each other to eliminate even
consideration of aspect of similarity. In my view, the answer is in the
negative. The rival products are inextricably linked from business and
commercial point of view which assumes significance. A hands off
approach cannot be adopted by the Court by refusing to consider the
aspect of similarity between the rival products only on the ground that
the comparison is between goods and services. For example, if a
Company uses trade name "Apple" for computers and other Company
starts using "Apple" for computer repair services, it cannot be said that
the goods cannot be compared with services as confusion is bound to
happen.
35. Perusal of Page 245 to 258 of the Plaint would indicate that the
Plaintiff's goods retailed at multi brand outlets have their own
dedicated space, which cannot be said to be far from the services of
retail stores featuring clothes covered by Class 35. The Defendants
offers for sale garments through its retail stores under the impugned
trademark "ROOKIE USA" which is unregistered in India and the
Plaintiff's offers for sale garments through dedicated space at multi-
brand outlets/exclusive outlets under its registered trademark
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"ROOKIES". Prima facie the Plaintiffs as well as the Defendants sells
goods, one through dedicated space at retail stores of its own brand,
and, other through retail stores of other brands and there is similarity
between the rival products. In the decision in British Sugar Plc v.
James Robertson & Sons Ltd (supra) the Court observed that there was
no reason in principle why in some cases the goods should not be
similar to services. In facts of the present case, stricto senso, the
comparison is not between goods on one hand and services on the
other hand but between rival products which are connected in
commercial and business sense.
36. It is not disputed that Plaintiffs have adopted and commenced
the use of its trade mark in the year 2008 and were retailing through
multi brand outlets since then. Even accepting that the first exclusive
outlet was launched by the Plaintiffs on 6th February, 2020, by retailing
their goods through multi brand outlets, prima facie the Plaintiffs are
the prior user of its registered trademark in respect of services under
Class 35, which right of exclusive user cannot be defeated by the
Defendants by use of unregistered trade mark in the year 2019.
Viewed thus, this Court has proceeded to decide the aspect of
similarity by considering prima facie merits for grant of injunction.
37. In British Sugar Plc v. James Robertson & Sons Ltd. (supra) the
Court laid down following relevant factors in considering whether or
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not there is similarity :
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods
or services reach the market;
(e) In the case of self-serve consumer items, where in
practice they are respectively found or likely to be found in
supermarkets and in particular whether they are, or are likely to
be, found on the same or different shelves;
(f) The extent to which the respective goods or services are
competitive. This inquiry may take into account how those in
trade classify goods, for instance whether market research
companies, who of course act for industry, put the goods or
services in the same or different sectors.
38. Closer home, in Indchemie Health Specialities (P) Ltd vs Intas
Pharmaceuticals Ltd25 the Hon'ble Division Bench of this Court held
that it is not sufficient to go merely by the classification against which
registration may have obtained. The classification may be one of the
considerations, but it cannot be the sole consideration. It held that the
usual criteria for determining whether the rival products are of similar
description include the nature and composition of the product, their
respective uses and functions and the trade channels through which
25 2017 SCC OnLine Bom 10127
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they are generally traded. The three need not even concurrently co-
exist.
39. In the case of Assam Roofing Ltd v. JSB Cement LLP 26 the
Calcutta High Court has observed that the test of similarity of goods is
looked at from a business and commercial point of view. The nature
and composition of goods, the respective uses of the articles and the
trade channels through which they are brought and sold all go into
consideration in this context.
40. If the well settled tests are applied to the facts of present case,
in my view, the plaintiff's goods/services are similar to and associated
with the Defendants goods/services. The relevant consumer base for
the Plaintiffs and the Defendants products is the same. The
Defendants store sells articles falling within Class 25. Considering the
nature of the goods/services offered by the Plaintiffs and the
Defendants, there is strong trade connection between the two. As the
rival products pertain to common trade sector of clothing, it cannot be
digested that there is no overlapping between the two. The
commonality of clothing sector demonstrates a strong trade
connection and apparent similarity and association between the
Plaintiff's products and Defendant's products.
41. It cannot be said that the rival products are so unconnected that
26 2015 SCC OnLine Cal 6581.
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there is no likelihood of confusion to be caused on the part of general
public and that there would not be any likely association with the
Plaintiff's product. The likelihood of association with the Plaintiff's
product is strengthened by the fact that the Plaintiffs are retailing its
product through its multi-brand/exclusive outlets since the year 2008
and the strong overwhelming possibility of the Defendants outlets
being considered as an outlet retailing the Plaintiffs goods cannot be
prima facie ruled out. Prima facie, the general public is likely to be
confused between the rival products and when confronted with the
Defendants outlets is likely to associate the same with the Plaintiff's
goods.
42. Another reason as to why the defence of Defendants cannot be
accepted is the varying stand adopted by the Defendants. In the
opposition proceedings, while opposing the Plaintiffs registration of its
mark "ROOKIES" in Hong Kong in Class 25 as well as Class 35, the
stand taken by the Defendant No 1 in paragraph 9 and 12 reads as
under :
"9. The Opposed Mark is confusingly similar to the
Opponents' Marks. The dominant part the Opposed Mark
"Rookies" is different from the dominant part of the
Opponents Mara "Rookie" only by the suffix "s" at the end.
Taking into account of the doctrine of imperfect recollection, it
is highly likely for the public to confuse the Opposed Mark and
the Opponents' Marks. The Applicant's Goods and Services are
identical and/or similar to Opponent's Goods and Services. The
Opposed Mark is likely to deceive the public in Hong Kong as it
is calculated to cause confusion on the part of the public and to
lead the public into the mistaken belief that the Applicant's
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Goods and Services are the goods and services provided or
authorised by the Opponents. The application for registration
of the Opposed Mark is made in bad faith. In the premises, the
Opposed Mark shall not be granted as it is contrary to Section
11(4)(b) and or Section 11(5)(b) of the Trade Marks Ordinance. "
"12. The Opposed Mark is similar to the Opponents'
Marks. The goods and services for which the Opposed Mark is
applied are identical and/or similar to those for which the
Opponents" Marks are protected. The use of the Opposed Mark
in relation to the applied goods and services is likely to cause
confusion on the part of the public. The Opposed Mark shall
not be granted registration as it is contrary to Section 12(3) of
the Trade Marks Ordinance."
43. It is the Defendant No.1's own stand that the Plaintiff's goods
and services for which the marks are applied are identical or similar to
the Defendant's goods and services which is likely to deceive the public
and likely to cause association between the Defendant's and Plaintiff's
goods and services. Mr. Tulzapurkar has rightly invoked the doctrine of
prosecution history estoppel which would operate against the
Defendants. The Plaintiffs mark was opposed by the Defendant No.1
without making any distinction between the children's clothing or adult
clothing or between goods on one hand and services on the other
hand. That being the stand adopted, the Defendants cannot take a
contrary stand in the present proceedings and create an artificial
distinction between goods and services. Even in the reply Affidavit
there is no such case of distinction between goods and services
pleaded by the Defendants.
44. Mr. Tulzapurkar is also right in pointing out the pleadings in the
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affidavit-in-reply while justifying the failure of negotiations for the
reason that permitting the Plaintiffs to enter into markets where the
Defendant No.1 had strong presence would amount to loosing the
progress and market dominance and take advantage of the hard
earned goodwill and reputation. The converse would also apply in the
present case particularly considering that in the year 2008 the
Plaintiffs had entered into market in respect of garments and the
Defendants have opened its first store in 2019 using identical mark.
Being an early entrant into market, the Plaintiffs have acquired
reputation and goodwill and by permitting the Defendants to use the
mark in respect of similar products would prima facie prejudice and
cause loss to the Plaintiffs.
45. Adoption of the identical/deceptively similar mark by the
Defendants in respect of the similar products cannot be, prima facie
said to be honest for the following reasons:
(a) The mark which was registered by the Defendant No.1 in 2011 in
countries outside India was "ROOKIE USA" whereas while entering the
Indian market, the Defendant No.1 has registered the mark "ROOKIE"
without any suffix or prefix. The Defendants mark is identical to that
of Plaintiffs mark and there is no explanation given by the Defendants
as to why the word "USA" has been dropped by the Defendant No.1
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while applying for registration in India.
(b) Though the registration was obtained for the mark "ROOKIE",
the Defendant No.1 has launched its store under the unregistered
trade mark "ROOKIE USA" where the word "USA" is written in
negligible font and prominence is given to the word "ROOKIE" which is
dishonest adoption.
(c) The Defendant No.1 had applied for registration in Hong Kong
in Class 18, 25 and 35 whereas while applying in India the Defendant
No 1 has applied for registration only in Class 35. There is thus a
conscious dishonest effort by the Defendants to ensure that its
registration does not come into conflict with the Plaintiffs mark in
Class 25. By applying only in Class 18 and Class 35 and no explanation
having been tendered despite specific argument being made, the
adoption of the said mark by the Defendants is dishonest.
(d) The Defendant No.1 has applied for registration of its trade
mark "ROOKIE" in Class 18 and Class 35 on 11 th April 2014 and
opened its first store under the different unregistered trade mark
"ROOKIE USA" in the year 2019. In the year 2018, the Plaintiffs had
applied for registration of mark in Hong Kong which was opposed by
the Defendant No.1 on 25th January 2019. The Defendants were
therefore aware about the existence of Plaintiffs mark in India and
despite thereof opened its store in the year 2019 under the
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deceptively similar mark which shows the dishonest adoption.
46. Section 28(3) of Trade Marks Act protects the right of use of the
trademark of registered proprietor and provides that no exclusive right
to use a registered trademark can be claimed against the other
registered proprietor of identical trade mark. The Defendant No.1 is
the registered proprietor of the trade mark "ROOKIE" in India,
however, the registration of the impugned mark does not prevent this
Court at interlocutory stage to go beyond the validity of trade mark
and grant injunction, if it is found that registration of the mark is ex
facie illegal or fraudulent or such which shocks the conscience of the
Court.
47. The Hon'ble Full Bench of this Court in Lupin Ltd vs Johnson and
Johnson (supra) was considering whether the Court can go into the
question of validity of registration of the trademark at an interlocutory
stage. The Hon'ble Full Bench held that the words "if valid" occurring in
Section 28 and "prima facie evidence of title" in Section 31 supports the
stand that the defence of invalidity of registration of the trademark
can be considered at the interlocutory stage. The Hon'ble Full Bench
came to a finding that it is only in exceptional circumstances such as
the registration being ex facie illegal or fraudulent or which shocks the
conscience of the Court that the Court may decline to grant relief in
favour of Plaintiff. A heavy burden is cast to challenge the validity of
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the registered trade mark at interlocutory stage. The decision has left a
small window to challenge the validity and in the present case, in my
view, prima facie the registration of Defendant's mark "ROOKIE" is ex
facie illegal and fraudulent. There is no doubt that the Defendant's
mark is identical to that of Plaintiff's mark "ROOKIES" which has been
granted registration in Class 25 in the year 2008 and is used by the
Plaintiffs since then. The Defendant No.1 has secured registration of
its mark in the year 2011 in Class 18 and Class 35.
48. The relative grounds of refusal under Section 11(a) of the Trade
Marks Act prohibits registration of trade mark which because of its
identity with the earlier trade mark and identity or similarity of goods
is likely to cause confusion on part of public or likely association with
the earlier trade mark. The application for registration by the
Defendant in Class 18 and 35 and omitting to seek registration in Class
25, when internationally its registrations are in Class 18, 25 and 35
would prima facie indicate a fraudulent act on the part of Defendant to
secure registration of its mark without running into the obstacle of
Plaintiff's mark being cited. There is no pleading in the reply that prior
to the application for registration, the Defendant No.1 carried out
search in the trade mark registry to ascertain whether similar marks are
registered. The adoption and registration of the mark "ROOKIE"
internationally is also since the year 2011 i.e. after the adoption of the
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mark by the Plaintiffs in the year 2008 in India.
49. The Plaintiffs have not only made out a prima facie arguable case
for invalidity but has also discharged the burden to rebut the
presumption of validity by showing the similarity in goods and services
and the likelihood of confusion on the part of public and likely
association with the earlier trade mark as noted above. It is not that
the Court is powerless to grant an injunction against the registered
trade mark if it is found that the registration of later mark would
constitute a case of infringement of earlier trade mark and would
cause irreparable harm and loss to the proprietor of earlier mark. The
value of the trade mark is its ability to simulate the sales and in the
present case by reason of the presence of Defendants in clothing
sector in which the Plaintiffs have been operating since the year 2008
would result in irreparable loss to the Plaintiffs. In my view, this is a fit
case where this Court can go beyond the validity of the mark and grant
injunction in favour of the Plaintiffs.
50. In so far as the aspect of delay is concerned, it is well settled that
the delay by itself is not a ground available as defence in the
infringement action [See Midas Hygine Industries v. Sudhir Bhatia 27 ].
The contention of the Defendants that the Plaintiffs have acquiesced
in use of the mark by the Defendants is sufficiently answered by the
27 2004 3 SCC 90.
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Delhi High Court in Hindustan Pencils Private Limited v. India
Stationary Products Co28, holding that in law mere failure to sue
without positive act of encouragement is not defence and is not
acquiescence.
51. In the present case, it needs to be noted that in the year 2019,
upon the announcement of opening of store by Defendant,
immediately cease and desist notice was issued on 23 rd March 2019 by
the Plaintiffs to the Defendant No.3. Subsequently, there was
communication between the Plaintiffs and the Defendants and talks
were ongoing for amicable co-existence of the parties. It is only in
August 2019 that the negotiations failed and thereafter Plaintiff filed
rectification application and also instituted the present proceedings.
For the purpose of dis-entitling the Plaintiffs from any interim relief on
the ground of acquiescence, it is required to be shown that there was
some positive act on the part of Plaintiffs which led to an
encouragement of the Defendants that the plaintiffs have given up its
contention, which positive act is missing in the present case.
52. The present action is for infringement of trade mark as well as
passing off. There are no arguments advanced by Dr. Tulzapurkar to
oppose the relief of passing off. It is well settled that for the purpose
of considering the relief of passing off, registration of the mark and
28 AIR 1990 Delhi 19.
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common field of activity are irrelevant. The Defendants commenced
use of the impugned trade mark "ROOKIES USA" in Class 35 in India on
23rd March 2019 when it opened its store by using the infringing trade
mark. The relevant date for the purpose of considering the goodwill
and reputation of the Plaintiff is in the year 2019. The Plaintiff is using
its mark "ROOKIES" since the year 2008 and was marketing its product
under the said mark for at least 11 years before the Defendant entered
the market in India. The Trade Marks Act being a territorial enactment,
the existence of Defendants and registration of the marks in other
countries is irrelevant. The Plaintiffs have placed on record material to
prima facie demonstrate its enormous reputation and goodwill. The
Plaintiff's sales turnover in the year 2018-19 was Rs.30,19,08,558/- and
the promotional expenses were at the relevant period Rs.17,64,027/-.
The Plaintiffs have also placed on record the vendor agreements with
multi-brand outlets such as Lifestyle International Private Limited and
Globus Stores Private Limited, which indicates that the Plaintiff's
goods were being retailed at well known multi-brand outlets. It is also
placed on record that Plaintiff's goods are endorsed by celebrities.
Prima facie from the material on record, I find that the Plaintiff's mark
had acquired reputation and goodwill in India at the time when the
Defendants commenced the use of its mark.
53. As held in the case of Ruston & Hornsby Ltd v. Zamindara
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Engineering Co29, the question to be asked in the case of passing off is
whether the Defendant has designed its product in such a manner so as
to lead the consumers in believing that goods of Defendant are that of
the Plaintiff. In my view, despite being aware of the Plaintiff's trade
mark, adoption of an identical mark by the Defendants is prima facie an
act of misrepresentation on the part of Defendants to ride upon the
reputation and goodwill of Plaintiffs in India. The pleadings which have
been raised in its affidavit-in-reply by the Defendants that permitting
the Plaintiffs to enter into the markets where the Defendant No.1 is
already established would dilute the market dominance, would also
apply to the Defendants when the Defendants attempt to make late
entry in the market which is dominated by the Plaintiffs. There is,
therefore, prima facie irreparable loss which will be caused to the
Plaintiff's reputation and goodwill by use of the impugned mark by the
Defendants. The Plaintiffs domain name comprises of the trade mark
being "rookiejeans.com" since the year 2008 whereas the Defendant
No.1's domain name "rookieindia.com" uses the Plaintiffs registered
trade mark. It is well settled that domain names can be legally
protected to the extent possible under the law relating to passing off.
(See Satyam Infoway Ltd v. Siffynet Solutions Pvt Ltd30.)
54. Dealing with the decisions relied upon Dr. Tulzapurkar, the
29 (1969) 2 SCC 727.
30 AIR 2004 SC 354.
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decision of American Home Products Corporation v. Mac Laboratories
Pvt. Ltd (supra) reiterates the ingredients of Section 28(3) of the
Trade Marks Act, 1958. There is no quarrel with the said proposition
however the Full Bench in Lupin (supra) considered the significance of
the words "if valid" occurring in Section 28(3) to hold that the Court at
the interlocutory stage can go beyond the registration.
55. In the case of C. & T. Harris (Calne) Ld. v. F. S. E. Harris (supra),
the High Court of Justice-Chancery Division held that there was no
passing off in that case as the Plaintiff's reputation extended only to
English bacon and the Defendant had made it clear to his customers
that he traded in Danish bacon. It further held that the use of his name
is bona fide and permissible under Section 44 of the Trade Marks Act,
1905 and therefore there was no infringement. The Court considered
the dissimilarity between the two variants of bacon and that the
Defendant's surname was "Harris" which was being used by the
Defendant. The decision was rendered in the facts of that case after
evidence was duly led and in my view, this was one of the extreme
cases where the Court differentiated between English bacon and
Danish bacon. Closer home, there are several decisions noted above
which take into consideration the similarity of goods or services in
order to apply the provisions of Section 29(2) of Trade Marks Act.
56. In the case of Zippo Trade Mark (supra), decision in the case of
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British Sugar Plc v. James Robertson & Sons Ltd (supra) was followed
and considering the goods which were involved in the said case, the
case of invalidation was decided. There is no quarrel with the
principles of law laid down in the said case. However, it is the
application of the said principles to the facts of each case which differs.
57. In the case of Application by Ladislas Jellinek for the
registration of a Trade Mark (supra) the Court held that shoe and shoe
polish were not goods of the same description and the registration
should be allowed. The decision came to be rendered in facts of that
case and one of the considerations that weighed with the Court was
the different trade channels as it held that the great bulk of shoe
polish was sold through grocers, dry salters and the like which does
not constitute the trade channel for trade of boots and shoes at all.
58. Next is the decision in the case of Raleigh International Trade
Mark (supra) which arose out of the opposition proceedings. The
Court held that if the goods and services specified in the opposed
application for registration are not identical or self evidently similar to
those for which the earlier trade mark is registered, objection should
be supported by evidence as to the similarity. In that case, the
evidence did not go into the question of similarity of goods and details
to support the case and it is in the facts of that case, the Court
dismissed the appeal. The said decision does not lay down an absolute
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proposition of law that in all cases where there is defence of
dissimilarity, no prima facie case can be considered for grant of
interlocutory relief and the case has to necessarily proceed for trial.
59. In Harding v. Smilecare Limited (supra) the Court followed the
decision of British Sugar Plc v. James Robertson & Sons Ltd (supra)
and held that goods or services were not identical. In that case, the
Court did not find any similarity as the claimants were dental
practitioner providing traditional dental services under the style "Smile
Dental Practice" and the Defendant operated a credit administration
scheme to dental practice under the name "Smile Practice". It is in
those facts that the Court came to the conclusion that there was no
connection between the services provided by the claimants and the
services provided by the Defendant except the word dentist. The
factual scenario is different in the instant case and the said decision
would not assist the case of the Defendants.
60. In M/s Parry and Co v. M/s Perry & Co(supra), the Court
compared the rival marks Parry and Perry and the rival products
confectionary and biscuit. The Court held that the registration will not
entitle the party to claim exclusive right over the entire class of goods,
which was not accepted. The decision is clearly distinguishable as there
is no case of the Plaintiffs claiming exclusive right over all the articles
covered by the classification.
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61. In Williams' Ld vs Massey Ld (supra), the injunction was granted
as substantial user was established prior to the application for
registration of the trade mark. The said case would in fact assist the
Plaintiffs as the Defendant No 1 has failed to establish substantial user.
The Plaintiffs trademark is being used since the year 2008, whereas the
Defendant No 1 applied for registration of the trade mark in the year
2014 and there is no user demonstrated of the registered trade mark
"ROOKIE".
62. Considerable reliance has been placed on foreign precedents to
substantiate the case of the Defendants. Most of the foreign decisions
were rendered at the time when the commercial market was restricted
and consumers could well differentiate between the different
products as the markets were not flooded with several variants of the
same product marketed under various brands. There is also difference
between foreign markets and Indian markets and the relevant
consumer base. The test of infringement or passing off when
considered from the aspect of Indian markets would be of average
consumer with imperfect recollection. The relevant consumer base in
foreign countries would be better educated and well informed capable
of distinguishing the goods from each other. The judicial
pronouncements by the Indian Courts have evolved the law on trade
marks while retaining the well settled tests but based on the home
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truths about the Indian commercial markets and relevant consumers in
India, which would be more applicable.
63. In light of the discussion above, the Plaintiffs have made out
prima facie case for grant of interim relief and in event, the relief is not
granted irreparable harm and loss would be caused to the Plaintiffs
tilting the balance of convenience in favour of the Plaintiffs.
Consequently, the interim application is allowed in terms of prayer
clause (a) , (b) and (c) which reads as under:
"(a) that pending the hearing and final disposal of the Suit,
Respondents by themselves, their Directors, associates, affiliated
companies, assignees in business, franchisees, licensees,
distributors, dealers, stockists, sister concerns, representatives,
agents and all persons acting for and on their behalf be restrained
by a temporary order and injunction of this Hon'ble Court from
manufacturing, marketing, exporting, retailing, selling,
distributing, whole selling any clothing, readymade garments,
apparels, and/or such allied and cognate goods using the
impugned trade mark/trading style/domain name 'ROOKIE' and/or
using any other trade mark/trading style/domain name containing
the word 'ROOKIE' and/or using any other mark either as a trade
mark, trade name, trading style, logo, device, domain name, key
word, meta tag, hashtag, or in any other manner which is identical
with and/or deceptively similar to the Applicants' registered trade
mark 'ROOKIES' and/or any 'ROOKIES' family/series of trade marks
in relation to any goods and services so as to infringe the
Applicant's trade mark 'ROOKIES' and its 'ROOKIES' family/series
of trade marks registered under Nos. 1766494, 2802602, 2802603,
4184928, 4184930, 4184932 in Class-25 and 4184927, 4184929,
4184931, 4184934, 4211737 in Class-35 by such use and/or in any
other manner whatsoever;
(b) that pending the hearing and final disposal of the Suit,
Respondents by themselves, their Directors, associates, affiliated
companies, assignees in business, franchisees, licensees,
distributors, dealers, stockists, sister concerns, representatives,
agents and all persons acting for and on their behalf be restrained
by a temporary order and injunction of this Hon'ble Court from
manufacturing, marketing, exporting, retailing, selling,
distributing, whole selling any clothing, readymade garments,
apparels, and/or such allied and cognate goods using the
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impugned trade mark/trading style/domain name 'ROOKIE' and/or
using any other trade mark/trading style/domain name containing
the word 'ROOKIE' and/or using any other mark either as a trade
mark, trade name, trading style, logo, device, domain name, key
word, meta tag, hashtag, or in any other manner which is identical
with and/or deceptively similar to the Applicants' registered trade
mark 'ROOKIES' and/or any 'ROOKIES' family/series of trade marks
in relation to any goods and services so as to pass of their goods/
services as those of the Applicants' goods sold and services
rendered under the trade mark/trading style/domain name
'ROOKIES' and its 'ROOKIES' family/series of trade marks or in any
other manner whatsoever;
(c) that pending the hearing and final disposal of the Suit,
Respondents by themselves, their Directors, associates, affiliated
companies, assignees in business, franchisees, licensees,
distributors, dealers, stockists, sister concerns, representatives,
agents and all persons acting for and on their behalf be directed
to transfer and completely hand over to the Applicants, the
impugned domain name 'https://rookieindia.com/ and/or any
other domain name incorporating the word 'ROOKIE' and its
access control to the Applicants. Alternatively, the Respondents
be directed to take immediate steps to takedown the website
hosted on the impugned Domain Name / other domain name
containing the word 'ROOKIE' and to cancel the registration of the
impugned domain name/other domain containing the word
'ROOKIE'"
[Sharmila U. Deshmukh, J.]
64. At this stage, request is made on behalf of the Defendants by Dr.
Tulzapurkar for stay of the present order. Request is opposed by Mr.
Hiren Kamod for the Plaintiffs. Considering that there was no ad-
interim relief operating, I am inclined to stay this order for a period of
six weeks from the date of uploading of this order on the official
website.
[Sharmila U. Deshmukh, J.]
Patil-SR (ch) 47 of 47
Signed by: Sanjay A. Mandawgad
Designation: PA To Honourable Judge
Date: 07/10/2025 19:21:20
