Delhi High Court
Girish Hosiery Pvt. Ltd vs Duke Fashions (India) Ltd. on 2 July, 2010
Author: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 2nd July, 2010.
+ CS(OS) No.2500/2007
%
DUKE FASHIONS (INDIA) LTD. ..... Plaintiff
Through: Mr. Sandeep Sethi, Sr. Advocate with
Ms. Anuradha Salhotra, Mr. Sumit
Wadhwa, Ms. Bhavna Gandhi, Mr.
Amritesh Mishra & Ms. Reetika Walia,
Advocates.
Versus
GIRISH HOSIERY & ORS. ..... Defendants
Through: Mr. Amarjit Singh, Advocate with Mr.
Survinder Singh, Mr. Gurpreet Singh,
Ms. Navneet Momi, Ms. Supreet &
Mr. Dhruv Bhagat, Advocates.
AND
+ CS(OS) No.1608/2008
GIRISH HOSIERY PVT. LTD. ..... Plaintiff
Through: Mr. Amarjit Singh, Advocate with Mr.
Survinder Singh, Mr. Gurpreet Singh,
Ms. Navneet Momi, Ms. Supreet &
Mr. Dhruv Bhagat, Advocates.
Versus
DUKE FASHIONS (INDIA) LTD. ..... Defendants
Through: Mr. Sandeep Sethi, Sr. Advocate with
Ms. Anuradha Salhotra, Mr. Sumit
Wadhwa, Ms. Bhavna Gandhi, Mr.
Amritesh Mishra & Ms. Reetika Walia,
Advocates.
CS(OS) 2500/2007 & CS(OS) 1608/2008 Page 1 of 35
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? No
2. To be referred to the reporter or not? No
3. Whether the judgment should be reported No
in the Digest?
RAJIV SAHAI ENDLAW, J.
1. The applications for interim relief in the two suits are for adjudication.
2. CS(OS) No.2500/2007 was instituted first against M/s Girish Hosiery,
Mr. Kanwar Singh, Mr. Inderpreet Singh & M/s Punjab Agencies Pvt. Ltd.
for restraining them from infringing the trademark "Duke" of the plaintiff
therein viz. M/s Duke Fashions (India) Ltd. (hereinafter called as "Duke
Fashions") and also for the reliefs of injunction, passing off, infringement of
copyright, accounts etc. On application, being I.A. No.14687/2007 in the
said suit, the defendants were restrained from using the mark "Duke" or
from passing off their goods under the said mark as that of M/s Duke
Fashions. The defendant no.1 M/s Girish Hosiery was initially sued through
its proprietor Mr. Narayan Poddar and on it being disclosed that
Mr. Narayan Poddar was no more on the date of institution of the suit, vide
order dated 22nd May, 2008, Mr. Dilip Poddar was permitted to be
substituted in place of Mr. Narayan Poddar as proprietor of the defendant
no.1 M/s Girish Hosiery. Upon it being subsequently disclosed that M/s
Girish Hosiery, initially a proprietorship, had been converted into a
partnership firm and that the business of the said partnership firm had been
taken over by M/s Girish Hosiery Pvt. Ltd., vide order dated 9th January,
2009 the said M/s Girish Hosiery Pvt. Ltd. was added as a defendant. The
defendants have filed I.A. No.9887/2008 under Order 39 Rule 4 of the CPC.
Thus I.A. No.14687/2007 & I.A. No.9887/2008 are for adjudication in this
suit.
3. M/s Girish Hosiery Pvt. Ltd. subsequently instituted CS(OS)
1608/2008 for restraining Duke Fashions from infringing its trademark or
from passing off its goods under the trademark as that of M/s Girish Hosiery
Pvt. Ltd. and for the ancillary reliefs of accounts, delivery etc. Along with
the said suit, application for interim relief being I.A. No.9607/2008 has also
been filed and which is also for adjudication. Besides, the aforesaid
applications for interim reliefs, application being I.A. No.178/2009 of M/s
Girish Hosiery Pvt. Ltd. under Section 124(1)(ii) of the Trademark Act in
CS(OS) No.1608/2008 is also for consideration.
4. Duke Fashions instituted the suit claiming to be a pioneer in T-shirt
culture in the country and engaged in the business of manufacturing and
marketing of high quality thermal wears, inter alia under the brand name
"Duke"; it was disclosed in the plaint that the mark "Duke" was initially
registered in the name of members of the Jain family and in which Duke
Fashions had acquired rights by way of assignment deed dated 25 th October,
1998; though in the plaint the various registrations in the name „Duke‟ or
similar names were cited but without giving the dates of registration and
only citing the dates till when the said registrations were renewed / valid; in
the said list registrations in Class 25 (with which the present suit is
concerned) i.e. Clothing, knitwears were also cited, besides those in Classes
1, 8, 13, 15, 16, 17, 23, 24, 26, 28 & 35; Duke Fashions though also gave
particulars of its sales all over India and in Delhi and the advertising and
publishing expenses for sale of its goods under the trademark "Duke" from
the year 1999 to 2007 but without giving the figures of sale and publicity
expenses of goods under Class 25 separately; Duke Fashions claiming to
have learnt in or around last week of November, 2007 of use of "Duke" by
Girish Hosiery (which shall include all the defendants in CS(OS)
No.2550/2007 including Girish Hosiery Pvt. Ltd.) and further claiming to be
„shocked‟ on making enquiries and having learnt of the registration of the
trademark "Duke Girish" (as distinct from "Duke") by the "defendants"
instituted the suit claiming the reliefs as aforesaid.
5. M/s Girish Hosiery has contested the suit filed by Duke Fashions inter
alia on the following pleas:
(i) that it / its predecessor is the registered proprietor of "Duke Girish"
since 29th October, 1974 and that in use since 1968 i.e. since much
prior to the claim of Duke Fashions of adoption and / or use of the
trademark "Duke"; (ii) that it / its predecessor has been continuously /
exclusively and extensively been using the trademark "Duke" since
the year of adoption i.e. 1968; (iii) that the registration of the
trademark "Duke Girish" was granted to it with a disclaimer to the
exclusive use of the word "Girish" and thus the essential feature of its
trademark was „Duke‟ alone; (iv) that M/s Girish Hosiery being a
registered proprietor of the trademark with respect whereto suit was
filed, the suit insofar as on the ground of infringement is barred by
Section 28(3) of the Trade Marks Act, 1999; (v) that the suit is also
barred under Section 30(2)(e) of the Act; (vi) that the suit for the relief
of passing off also is not maintainable because M/s Girish Hosiery
and / or its predecessor have been using trademark since prior to
adoption / registration by Duke Fashions; (vii) that it has extensively
used the trademark "Duke" and spent huge amounts on popularizing
the same; (viii) M/s Girish Hosiery also pleaded copyright registration
of its label "Duke" since 1978 i.e. much prior to that of Duke
Fashions; (ix) that the registrations by Duke Fashions in Classes other
than Class 25 are not relevant for the purposes of the present suit; (x)
Duke Fashions has intentionally suppressed from the Court that the
examination report issued on 4th April, 1983 when Duke Fashions had
applied for registration of the trademark "Duke" in Class 25 had
mentioned the prior registration of "Duke Girish"; Duke Fashions was
thus since then aware of the registration "Duke Girish" with respect
whereto suit was filed and in the plaint has falsely expressed „shock‟
of learning of the registration for the first time only in the last week of
November, 2007; it is pleaded that Duke Fashions is not entitled to
any discretionary interim relief on this ground alone; (xi) Duke
Fashions at the time of obtaining ex parte relief also did not inform
the Court of the disclaimer of the exclusive use of word „Girish‟ of
which it must have learnt on enquiry as pleaded in the plaint and for
which suppression also Duke Fashions is not entitled to the interim
relief; (xii) that the documents and advertisements relied on by Duke
Fashions are all of just prior to the institution of the suit and do not
disclose a long standing use of the trademark "Duke " in Class 25 by
the Duke Fashions; (xiii) Duke Fashions is not entitled to interim
relief on the ground of laches, acquiescence and waiver i.e. of inspite
of learning of registration by M/s Girish Hosiery on receiving the
examination report issued on 4th April, 1983 as aforesaid having
instituted the suit only in the year 2007; (xiv) that registration in
favour of Duke Fashions is in violation of Section 11 & 12 of the Act
and for which Girish Hosiery Pvt. Ltd. prior to being made party to
the suit No.2500/2007 and prior to institution of
CS(OS) No.1608/2008 had already applied under Section 124.
6. Duke Fashions in its replication has inter alia pleaded that Girish
Hosiery had not been using its trademark since long prior to the application
for registration by Duke Fashions. It has sought to explain away the alleged
suppression of knowledge of trademark of the defendants in 1983 by
contending that the events leading to registration of its trademark were not
relevant. The other alleged suppression of disclaimer of exclusive use of
"Girish" is sought to be explained by pleading that such disclaimer does not
change the registration from "Duke Girish" to "Duke" alone. It is contended
that it is Girish Hosiery which, after Duke Fashions had popularized the
trademark mischievously attempted to pass off its goods as that of Duke
Fashions.
7. There is no need to detail the pleadings in the suit being
CS(OS) No.1608/2008, as the same are materially the same as detailed
above. The variance, if any, would be noted in the contentions of the
counsels.
8. The hearing on the applications itself had spread over a long period of
time and further since considerable time has elapsed since conclusion of
hearing, and to do justice to the submissions made, it is deemed expedient to
list out the same also in detail.
9. The senior counsel for Duke Fashions has contended:
(i) That Girish Hosiery has not been using its trademark "Duke
Girish" since 1974 and for this reason only did not oppose the
registration applied for by Duke Fashions in 1981; (ii) It is only now,
just prior to the institution of the suit, when Duke Fashions has built
tremendous goodwill and market for its goods under the name "Duke"
that Girish Hosiery with mala fide intention intended to pass off its
goods as that of Duke Fashions; (iii) Registration of the mark "Duke
Girish" without its use is of no consequence; (iv) that besides the
relief of infringement for which the suit was filed, the suit for the
relief of passing off is in any case maintainable. Reliance is placed on
Section 27 (2) of the Act. It is contended that prior use is superior and
Girish Hosiery had abandoned the mark by its non user; (v) that it is
clearly made out from the documents that Girish Hosiery had adopted
the trade packaging / dress of Duke Fashions; (vi) What Girish
Hosiery is using now is not what was registered as far back as in
1974; (vii) Similarities in the packaging adopted by Girish Hosiery
in 2007 with that of Duke Fashions are pointed out; (viii) that though
Duke Fashions has given figures of its sales as well as of amount
spent on publicity, Girish Hosiery has failed to plead the same; (ix)
Duke Fashions since the year 1981 had applied for and obtained as
many as 34 registrations of the mark "Duke" and Girish Hosiery had
not opposed even one of those; a clear case of acquiescence, waiver
and estoppel is made out; (x) the earlier advertisement of the year
1990 of Duke Fashions filed with the list of documents is pointed out;
(xi) Mala fides of Girish Hosiery are sought to be shown from the
adoption of an e-mail I.D. deceptively similar to that of Duke
Fashions; (xii) It is contended that Duke Fashions, though owner of
other trademarks also, is not using any other trademark except "Duke"
and thus the sale figures and publicity expenses cited are of trademark
"Duke" only and of no other trademark; it is however admitted that
there is no other averment to the said effect in the pleadings; (xiii)
From the documents of Girish Hosiery, it is pointed out that the mark
is not "Duke" as of Duke Fashions but of "Girish Duke Calcutta";
(xiv) it is further pointed out from documents filed by Girish Hosiery
that sales in the year 2005-06 were only of Rs.2.46 lacs in comparison
to the sales of Duke Fashions of over Rs.40 crores; (xv) from yet
other documents filed by Girish Hosiery, it is pointed out that the
mark earlier being used was "Girish" and not "Duke"; (xvi) It is
contended that invoices from 1987 to 1999 filed by Girish Hosiery to
show use of the trademark are fabricated being in favour of one party
only, in the same handwriting, prepared on the same day and through
the same broker and not containing any sales tax number; on enquiry,
it is informed that though local sales tax in West Bengal was
exempted but the Central Sales Tax was leviable and since the sales in
the said invoices were from Calcutta to Delhi, the fact that no sales tax
element was shown clearly established that the invoices were
fabricated; (xvii) the advertisements filed by Girish Hosiery are
pointed out to be of the same year i.e. 1996 and 1997 and of a local
newspaper limited to West Bengal only; (xix) from the date of
issuance (1st January, 1992) of certified copy of the Duke Fashions
trade mark bearing No.383896, filed by Girish Hosiery, it is
contended that Girish Hosiery since 1992 had knowledge of the
registration in favour of Duke Fashions but still neither took any
action nor opposed any subsequent registrations applied for by Duke
Fashions; (xx) Attention was invited to Duke Fashions‟ invoices
since February, 1992 and to affidavits of various trade persons filed
stating that they associate the trade mark "Duke" with Duke Fashions
only; (xxi) it is pointed out from the documents filed by Girish
Hosiery that the first document of use filed is from the year 1983
onwards and which is also suspect as aforesaid; from the same, it is
contended that the use prima facie shown by Girish Hosiery is from
after the date of registration by Duke Fashions; it is urged that prior
user scores over prior registration and Duke Fashions is entitled to
interim relief on this ground alone; (xxii) Argument of abandonment
of the trademark issued to Girish Hosiery is urged; (xxiii) Deception
is attributed to Girish Hosiery for dropping "Girish" from its mark
since 2007 onwards; (xxiv) A compilation of the following
judgments is also handed over:
(i) Usha International Ltd. Vs. Usha Television Ltd. 1987 PTC
240A.
(ii) Century Traders Vs. Roshan Lal Duggar & Co. AIR 1978
(Del.) 250
(iii) Corn Products Refining Co. Vs. Shangrila Food Products Ltd.
1960 (1) SCR 968.
(iv) N.R. Dongre Vs. Whirlpool Corporation
MANU/DE/0700/1995.
(v) Pioneer Nuts & Bolts Pvt. Ltd. Vs. Goodwill Enterprises
MANU/DE/0814/2008.
(vi) Amritdhara Pharmacy Vs. Satya Deo Gupta AIR 1963 SC
(vii) Om Prakash Gupta Vs. Parveen Kumar
MANU/DE/1199/2000.
(viii) Sona Spices Pvt. Ltd. Vs. Soongachi Tea Industries Pvt. Ltd.
MANU/DE/3457/2006.
(ix) Radhika Agro Industries Pvt. Ltd. Vs. Paawan Agro Foods
Ltd. MANU/DE/1335/1998.
(x) Cluett Peabody & Co. Inc Vs. Arrow Apparels 1998 PTC (18)
(xi) Evergreen Sweet House Vs. Ever Green 2008 (38) PTC 325
(Del.).
(xii) Metropol India (P) Ltd. Vs. Praveen Industries India (Regd.)
1997 (43) DRJ (DB).
(xiii) N.R. Dongre Vs. Whirlpool Corporation 1996 (7) JT SC 555.
(xiv) Winthrop Products Inc. Vs. Eupharma Laboratories Ltd. 1998
PTC (18) 213 (Bom).
(xv) Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir Bhatia 2004
(28) PTC 121 (SC).
10. The counsel for Girish Hosiery has contended:
(i) Duke Fashions was earlier marketing thermal wears under the
trademark "Neva" and used "Duke" for thermal wears in 2007 only as
borne out from the plaint in CS(OS) No. 2500/2007; a mala fide shift
in the written statement in CS(OS) No.1608/2008 is urged; (ii) The
date of application of Girish Hosiery for registration is 29 th October,
1974 pleading adoption / use since 1968; there was no need at that
time to falsely plead the date of adoption / use and thus the case of
Girish Hosiery / its predecessor having adopted the mark "Girish
Duke" since 1968 has to be believed; (iii) the essential feature of the
mark of Girish Hosiery is "Duke" because of the disclaimer of
"Girish" - registration is thus confined to "Duke" only; there is a
change in the law relating to disclaimer from the 1958 Act in the 1999
Act; registration of Girish Hosiery being of prior to the 1999 Act was
under the 1958 Act and the effect of disclaimer there under will have
to be seen. Attention is invited to Section 17 and Section 28(3) of the
1958 Act; (iv) thus none other can use "Duke", the same being an
essential feature of the mark of Girish Hosiery; (v) Duke Fashions has
in the replication admitted knowledge of the disclaimer but
intentionally did not disclose the same at the time of obtaining the ex
parte relief; (vi) Attention is invited to para 11 of the written
statement filed by Duke Fashions in CS(OS) No.1608/2008 where
sales of Girish Hosiery though stated to be negligible are admitted. It
is urged once such sales are admitted, Duke Fashions cannot urge
abandonment and that there is no law that one with larger volume of
sales is entitled to restrain the one with smaller volumes / quantum of
sale; (vii) Duke Fashions prior to its first registration of mark "Duke"
had knowledge of the prior registration of "Girish Duke" and should
not have adopted the infringing mark "Duke"; (viii) Duke Fashions
registration mark has the caricature of the face of a man wearing a hat
with a smoking pipe in his mouth, just like Girish Hosiery‟s mark has
the prefix "Girish"; it is further pointed out that though in the
registration of Duke Fashions "Duke" is spelt out in small letters but
Duke Fashions is using capital letters in its publicity and packaging
material; on the contrary, Girish Hosiery has registration mark as
"Duke" with a capital „D‟; (ix) It is averred that Duke Fashions had
manufactured the affidavits in order to show its user since prior to the
date of which documents have been filed - affidavits though of
different persons have same signatures and inconsistent age; it is
contended that Duke Fashions having indulged in such practices are
not entitled to any discretionary relief; (x) It is urged that documents
filed by Duke Fashions, being a letter dated 28th October, 1982 to
show use since then is office copy of a letter to ESIC and does not
show use of the trademark and else there is nothing to show use since
prior to 1992; (xi) though Girish Hosiery is entitled to protection
under Section 34 being a prior user, Duke Fashions is not entitled to
benefit thereof; (xii) Duke Fashions had learnt in 1983 of registration
in the name of "Girish Duke", if desirous of sale using the mark
"Duke" and if contending that Girish Hosiery / its predecessor had
abandoned the mark "Girish Duke", ought to have applied for
cancellation of "Girish Duke" on ground of abandonment; (xiii)
Attention is invited to Rules 38 & 39 of the 1959 Rules; (xiv) Duke
Fashions in its written statement in CS(OS) No.1608/2008 has taken a
plea of Section 28(3) which is against its argument, that because
Girish Hosiery‟s mark is "Girish Duke", there was no similarity;
(xv) the subsequent registration in favour of Duke Fashions is bad
and in the face of the bar contained in Sections 11 & 12 (1) of the old
Act. Reliance in this regard is placed on para 12 of the Century
Traders Vs. Roshan Lal Duggar & Co. AIR 1978 Delhi 250; (xvi)
Reliance is placed on Section 31 to urge the plea of prima facie
validity of the mark; (xvii) It is contended that the plea by Duke
Fashions of abandonment by Girish Hosiery / its predecessor of their
mark is falsified in view of the documents filed and moreover no such
plea was taken in the plaint in CS(OS) No.2500/2007 or in written
statement in CS(OS) No.1608/2008 and on the contrary sale by Girish
Hosiery though negligible is admitted; (xviii) If non availability of
documents is deemed to point to abandonment, on the same parity,
Duke Fashions is also deemed to have abandoned its registration for
having not filed any documents of sale till the year 1992; (xix) Duke
Fashions inspite of knowledge in 1983 of registration of "Girish
Duke" used the trademark "Duke" at its own risk and peril; (xx) for
the argument of abandonment, action under Section 46 ought to have
been taken; (xxi) Reference is made to:
(a) Consolidated Foods Corporation Vs. Brandon & Company
Private Ltd. AIR 1965 Bombay 35 followed by the Division
Bench of this Court in Century Traders Vs. Roshan Lal
Duggar & Co. (supra).
(b) N.R. Dongre Vs. Whirlpool Corporation AIR 1995 Delhi 300
on honest adoption.
(c) Parle Products (P) Ltd. Vs. J.P. & Co., Mysore 1972 (1) SCC
(d) M/s National Chemicals & Colour Co. Vs. Reckitt & Colman
of India Limited AIR 1991 Bombay 76.
(e) Rupa & Co. Ltd. Vs. Dawn Mills Co. Ltd. 1999 PTC (19) 334
On what is deceptive similarity and what are the essential
features of trademark.
(f) Om Prakash Gupta Vs. Parveen Kumar 2002 (2) RAJ 505
(Del) where non disclosure of the disclaimer in plaintiff‟s mark
was held to be misrepresentation leading to dismissal of
application for interim relief.
(g) The Registrar of Trade Marks Vs. Ashok Chandra Rakhit
Ltd. AIR 1955 SC 558 on the effect of disclaimer.
(h) Jai Prakash Gupta Vs. Vishal Aluminium Manufacturing
Company 1996 PTC (16) 575
(i) Bimal Govindji Shah Vs. Panna Lal Chandu Lal 1997 PTC
(17) 347
(j) Radhika Agro Industries Pvt. Ltd. Vs. Paawan Agro Foods
Ltd. 1998 PTC (18) 151
On the proposition that the dubious character of document is
not to be decided at the stage of deciding the application for
interim relief.
(k) Glaxo Operations U.K. Ltd. Vs. Samrat Pharmaceuticals AIR
1984 Delhi 265
(l) Dr. Ganga Prashad Gupta & Sons Vs. S.C. Gudimani 1986
PTC 17
(m) Amar Singh Chawla Vs. Rajdhani Roller Flour Mills Pvt. Ltd.
1990 PTC 220.
All on the proposition that use, inspite of knowledge of other‟s
trademark, is at own risk and peril.
(n) Ansul Industries Vs. Shiva Tobacco Company 2007 (34) PTC
392 (Del) on the aspect of delay / laches. It is contended that
while it is borne out that Duke Fashions knew of the mark of
"Girish Hosiery" in 1983 there is nothing to show that Girish
Hosiery knew of the mark of Duke Fashions.
(o) Power Control Appliances Vs. Sumeet Machines Pvt. Ltd.
1995 PTC 165 to contend that if Duke Fashions felt that Girish
Hosiery / its predecessor was not using its mark, they should
have applied for cancellation.
(p) Winthrop Products Inc. Vs. Eupharma Laboratories Ltd. 1998
PTC 18 (Bom.) where use inspite of knowledge of earlier
registration in favour of another was held to be dishonest.
(q) Biochem Pharmaceutical Industries Vs. Pharma Synth
Formulations Ltd. 2000 PTC 361.
It is explained that at the relevant time no Central Sales Tax also was
leviable on the hosiery goods. It is further contended that sporadic use by
Duke Fashions, as made out from the documents filed, would be of no avail
particularly when Girish Hosiery / its predecessor are admittedly the prior
inventor and user of the mark "Duke", admitted by Duke Fashions also to be
a coined name, having no relation to the goods in Class 25.
It is thus contended that it is Duke Fashions which is liable to be
restrained and the ex parte order against Girish Hosiery is liable to be
vacated.
11. The senior counsel for Duke Fashions in rejoinder contended:
(i) That though Duke Fashions has objection even to use by Girish
Hosiery of the trademark "Duke" in conjunction with „Girish‟ but
Girish Hosiery cannot be permitted to split up its trademark "Girish
Duke" as is being sought to be done; (ii) there is no distinction in
Section 17 of the old Act and under the new Act read with Section
18(4) thereof; (iii) If Girish Hosiery / its predecessor was keen to
have separate mark of "Girish and Duke", they could have applied
therefor and cannot now be permitted to urge that its mark is "Duke"
and not "Girish Duke"; (iv) the entire mark has to be compared with
the infringing mark despite disclaimer and the disclaimed portion
cannot be obliterated for applying the test; (v) The very fact that
predecessor of Girish Hosiery, in 1974 could not satisfy that "Girish
Duke" had acquired distinctness showed that there was not much use
since 1968 till registration in 1979; (vi) there is nothing to show that
even thereafter till 5th December, 1981 when Duke Fashions / its
predecessor applied for registration there was any use of "Girish
Duke"; on the contrary, Duke Fashions / its predecessor claimed use
since 1978; (vii) Duke Fashions inspite of the examination report of
1983 (supra) showing prior registration of "Girish Duke" could get
registration only because the Registrar was satisfied under Section
12(3) of honest concurrent use of "Duke" by the predecessor of "Duke
Fashions" since the year 1978; the non-filing of any objection by
Girish Hosiery / its predecessor also shows that they were not
prejudiced by registration of "Duke" and which could only be either
because "Duke" was not considered as deceptively similar to "Girish
Duke" or they were not in a position to establish prior use or they
were no longer interested in mark "Girish Duke" and waived their
right to object; Girish Hosiery thus cannot claim any right to the mark
"Duke"; on enquiry, as to on what basis Duke Fashions claim to be
entitled to restrain use of "Girish Duke Calcutta", the senior counsel
replied that it was not necessary for Duke Fashions/ its predecessor to
apply for striking off of the registration of Girish Duke before getting
its mark registered and now it is not in public interest that both marks
i.e. "Duke" and "Girish Duke" should be used since it is likely to
cause confusion; (viii) that Duke Fashions mark has the only word
„Duke‟ while Girish Hosiery‟s mark, besides having "Duke" has the
word „Girish‟ and „Calcutta‟ also; (ix) the documents of Girish
Hosiery do not show that the word „Duke‟ was being used as the
trademark; (x) the invoices from 1987 to 1999 filed by Girish Hosiery
are fabricated as all are signed by one Sh. Shridhar Poddar who is
stated to have joined the firm from the date after the date of the
invoices; (xi) the plea of Girish Hosiery of Central Sales Tax being
not leviable is false since Duke Fashions during the same time was
paying the Central Sales Tax; (xii) Mala fides were averred in Girish
Hosiery not disclosing the title of Girish Hosiery Pvt. Ltd. in the mark
immediately.
12. Both counsels contend that since both hold registrations, no case for
infringement by either against the other is maintainable. Both further agree
that the validity of the registrations cannot be gone into by this Court and
will have to be decided by the appropriate authority only.
13. In view of the aforesaid contentions, the matter falling for
adjudication at this interim stage can be divided into following parts:
A. Whether Duke Fashions is entitled to continue use of its
trademark "Duke" during the pendency of the suit and whether it is
entitled to restrain Girish Hosiery altogether from using any
trademark with the word „Duke‟ or is disentitled from restraining
Girish Hosiery from at least using its registered trademark "Girish
Duke Calcutta".
B. Whether Duke Fashions is liable to be restrained from using its
registered trademark "Duke" for the reason of Girish Hosiery being
the prior registrant and / or user of the trademark "Girish Duke
Calcutta".
14. I have in Clinique Laboratories LLC Vs. Gufic Limited 2009 (41)
PTC 41 (Del) held that a suit for infringement of registered trademark lies
against another registered proprietor of identical or similar trademark and in
such suit, while staying the further proceedings pending decision of the
registrar on rectification, an interim order including of injunction restraining
the use of the registered trademark by the defendant can be made by the
Court, if the Court is prima facie convinced of invalidity of registration of
the defendant's mark. Though the said judgment is informed to be under
appeal, I find two other Single Judges of this Court in Mrs. Rajnish
Aggarwal Vs. Anantam MANU/DE/3169/2009 & in Siel Edible Oils
Limited Vs. Khemka Sales (P) Ltd. MANU/DE/0596/2010 to have not
disagreed with the said view after considering the same.
15. I am of the view that Duke Fashions is not entitled to restrain Girish
Hosiery from at least using its registered trademark for the following
reasons:
(i) Duke Fashions, if not at the time of adopting the mark "Duke",
at least at the time of registration thereof, as far back as in the year
1983 became aware of the trademark of Girish Hosiery / its
predecessor. Duke Fashions notwithstanding the said knowledge, way
back in the year 1983, without altering its trademark in any manner
proceeded with the registration and claims to have made heavy
investments in the said trademark. Though Duke Fashions has not
informed as to whether the Registrar had applied its mind as to the
effect if any of the registered trademark of Girish Hosiery on the
application of Duke Fashions for registration and / or the reasons
which prevailed with the Registrar for granting registration to Duke
Fashions inspite of the registration in favour of the Girish Hosiery, the
fact remains that as far as Duke Fashions was concerned, it did not
feel that the prior registration of the trademark of Girish Hosiery
would cause any confusion or hindrance in its use of the trademark
"Duke" or that Girish Hosiery would be able to by use of its
trademark, pass off their goods as that of Duke Fashions. Duke
Fashions having proceeded on the said premise is now estopped from
contending that by Girish Hosiery using their prior registered
trademark, Duke Fashions would suffer in any manner whatsoever.
(ii) I also find merit in the plea of Girish Hosiery of Duke Fashions
having concealed from this Court the factum of its knowledge since
1983 of the prior registered trademark of Girish Hosiery. The
pleading of Duke Fashions of "shock" on learning just prior to the
institution of the suit of the registration of the trademark in favour of
the Girish Hosiery was directly contrary to the actual fact of
knowledge of the same since 1983. Duke Fashions has admitted the
said knowledge and the explanation given of being not required to
disclose the events forming part of registration of its trademark is not
found satisfactory. Even though Duke Fashions is an assignee of the
original registrant of the trademark but an assignee before taking
assignment of rights in a trademark is expected to inspect and
examine all documents of registration and which would include
examination of the report received on application for registration
having been filed. Thus, it cannot be said that Duke Fashions did not
have the knowledge of the same. In any case, it has not been so
pleaded. This was a relevant factor for this Court to determine
whether ex parte injunction was to be granted or not. If it was
disclosed by Duke Fashions that it had knowledge since 1983 of the
registration of the trademark in favour of Girish Hosiery / its
predecessor, this Court may have taken the same into consideration
while granting / not granting ex parte order or may have confined the
ex parte injunction to use other than as per its registration.
(iii) The explanation now given by Duke Fashions of Girish Hosiery
having not used the registered trademark is an afterthought. It is not
the plea of Duke Fashions that notwithstanding its knowledge in the
year 1983 of the prior registration of the trademark in favour of the
Girish Hosiery / its predecessor, it went ahead with the registration
and use of the trademark for the reason of Girish Hosiery / its
predecessor having abandoned the same. The said explanation came
only when Girish Hosiery pleaded the said knowledge.
(iv) Thus notwithstanding the question of similarity or not, Duke
Fashions merely on the ground of estoppel is not entitled to restrain
Girish Hosiery, the holder of the following trademark:
from using the said trademark. The ex parte injunction to the extent
of restraining Girish Hosiery from using its registered trademark shall
stand vacated with effect from four weeks hereafter.
(v) However, it is clarified that Girish Hosiery shall on such
vacation be entitled to use the trademark strictly as per the registration
and not by making any alterations thereto.
(vi) Duke Fashions however, in the event of Girish Hosiery upon
such vacation of the ex parte interim order choosing to use their
registered trademark will be entitled to by public advertisements and /
or otherwise inform its customers / dealers / retailers etc. of the
manufacturer of the goods bearing the said trademark and / or the
goods bearing the said trademark being different from its own goods
so as to prevent anyone from being misled into confusing the
trademark of one for the other. Similarly Girish Hosiery shall also be
entitled to by advertisements etc. inform the customers / public at
large to be aware of the distinction between the two trademarks.
(vii) I am conscious of the confusion which is likely to prevail and
which will thereby affect the members of the pubic owing to the
simultaneous use of the two trademarks in relation to the same goods
and particularly when the same is by way of interim arrangement and
subject to the final decision in the suit which may be otherwise.
However, in view of the conduct aforesaid of Duke Fashions, it would
be inequitable to proceed in any other fashion.
16. I next take up the limb as to whether Duke Fashions is entitled to
restrain Girish Hosiery from using the trademark Duke in any other manner
than as per its registration as dealt with hereinabove. In my view Duke
Fashions is entitled to so restrain Girish Hosiery for the following reasons:
(i) Though the registration in favour of Girish Hosiery is depicted in
paragraph 15(iv) hereinabove, but Girish Hosiery at the time of
institution of the suit was complained against and found to be using
the trademark not as per its registration but as under:
(ii) Duke Fashions at that time was using the following trade mark:
(iii) The use as aforesaid by Girish Hosiery is found intended to take
advantage of the goodwill of Duke Fashions‟ trademark and to pass
off its goods as that of Duke Fashions.
(iv) Girish Hosiery has been unable to place any material to show
that it was using the trademark in the manner aforesaid since prior to
the use by Duke Fashions. Duke Fashions is found to be the prior user
of the trademark as depicted in para (ii) above and the use by Girish
Hosiery of the trademark as depicted in para (i) hereinabove is found
deceptively similar to the prior user by Duke Fashions.
(v) None of the documents filed by Girish Hosiery viz. invoices /
bills bear the mark/label/design depicted in paragraph (i) hereinabove
nor is the word "Duke" found printed even on the said bills. The said
bills bear the mark / label "Girish" only. Only the goods purportedly
sold under the said bills / invoices are described as of "Duke" make /
variety.
(vi) Duke Fashions is therefore found right in contending that Girish
Hosiery, after Duke Fashions had popularized its thermal / inner wear
in the name and style of "Duke" with the label as aforesaid, adopted a
deceptively similar label intended to pass off its goods as that of Duke
Fashions.
(vii) The comparative aspects are not discussed in this para, being
the subject matter of the entitlement of Girish Hosiery to injunct Duke
Fashions.
17. Coming to the aspect whether Girish Hosiery, on account of prior
registration, is entitled to injunct Duke Fashions from use of its registered
trademark "Duke", in my considered opinion the answer to the same must be
in the negative for the following reasons:
(i) The contention of Girish Hosiery of being entitled to use "Duke"
alone as its trademark on account of disclaimer imposed on it while
granting registration as depicted in para 15(iv) above is not found to
be correct. The reliance in this context on Section 17 is also not found
to be apposite. The proviso to Section 17 of the old Act clearly
provides that disclaimer obtained therein shall not affect any rights of
the proprietor of the trademark in the registration. Girish Hosiery
inspite of disclaimer with respect to "Girish" did not opt to delete
"Girish" from its trademark but went ahead with the registration with
"Girish" and "Calcutta" forming an integral part thereof. Subsequent
use of the trademark by Girish Hosiery also shows the prominent use
of "Girish" on invoices. "Girish" & "Calcutta" forming part of the
trademark were sought to be dropped only after Duke Fashions had
established its trademark in relation to hosiery and thermal wears and
in relation to the identical goods. The Supreme Court in The
Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd. AIR 1955
SC 558 relied on by the senior counsel for Duke Fashions has held
that the purpose of requiring disclaimer is to define the rights of the
proprietor under the registration so as to minimize, even if it cannot
wholly eliminate, the possibility of extravagant and unauthorised
claims being made on the score of registration of the trademarks and
that where a distinctive label is registered as a whole, such registration
cannot possibly give any exclusive statutory right to the proprietor of
the trade mark to the use of any particular word or name contained
therein apart from the mark as a whole. It was further reiterated that
the label does not consist of each particular part of it, but consists of
the combination of them all. The senior counsel for Duke Fashions in
this regard also relies on the judgment of the Bombay High Court in
Pidilite Industries Ltd. Vs. S.M. Associates 2004 (28) PTC 193 and
with which I respectfully agree, reiterating that disclaimer does not
affect the significance which a mark conveys to others when used in
the course of trade; disclaimers do not go into the market place, and
the public generally has no notice of them. The matter which is
disclaimed is not necessarily disregarded when question of possible
confusion or deception of the public, as distinct from the extent of a
proprietors exclusive rights, are to be determined. In that case, the
whole of the mark including the disclaimed portion was considered to
determine the question of confusion/deception. The counsel for
Girish Hosiery has not been able to show any judgment taking a
contrary view. The judgments cited do not lay down that the
proprietor of a registered trademark with a disclaimer with respect to
any part thereof is entitled to dissect the trademark and to use the part
other than that with respect whereto disclaimer has been given and
claim rights therein as a registered proprietor. The rights therein can
be claimed only under the common law and not as a registered
proprietor. Reference in this regard can be made to Super Cassettes
Industries Ltd. Vs. Union of India MANU/DE/1083/2010, Rich
Products Corporation Vs. Indo Nippon Food Ltd.
MANU/DE/0371/2010 and Bawa Masala Co. Vs. Gulzari Lal Lajpat
Rai 11(1975) DLT 270 (DB).
(ii). Girish Hosiery inspite of several registrations by Duke Fashions of the
trademark and / or similar names did not file any objections. A proprietor of
a registered trademark is required in law to be vigilant and to keep a track of
the applications being filed for registration and to object to applications for
registration of marks which are found to be deceptively similar or infringing
the registered mark. But for the registered proprietor and the public at large
being required to keep such vigil, there was no occasion for the Act and the
Rules providing for advertisement before registration and adjudication of
objections to registration. Girish Hosiery in the present case right from the
year 1981 till the institution of its suit in the year 2008 i.e. for 27 years
maintained quietus and permitted Duke Fashions to increase its investments
in the trademark "Duke".
(iii) It is not the case of Girish Hosiery that it did not know or was not
aware of Duke Fashions mark. In fact Girish Hosiery in 2007 adopted the
mark which has been found deceptively similar to that of Duke Fashions
particularly considering the graphic of a fruit with a swirling „D‟ above the
word „Duke‟ and which is found similar to the stylized „D‟ in the trademark
of Duke Fashions, shows that Girish Hosiery was in fact aware of the
trademark of Duke Fashions.
(iv). The counsel for Girish Hosiery has also not been able to give any
explanation of the certified copy of the registration of Duke Fashions
obtained on 1st January, 1992 filed by Girish Hosiery with its documents.
The same also shows that Girish Hosiery at least since 1992 if not earlier
was aware of the trademark of Duke Fashions.
(v) Girish Hosiery is thus found to have acquiesced in Duke Fashions at
its cost developing the market for the goods under the trademark "Duke" and
to thereafter take advantage of the same and to pass of its goods as that of
Duke Fashions.
(vi). Duke Fashions is found to be advertising not only thermals but also
jackets, sweaters, sweatshirts, tracksuits, shirts & trousers i.e. a complete
range of clothing under the trademark "Duke" besides goods falling in other
classes. Girish Hosiery having allowed Duke Fashions to have developed a
wide range of goods under the trademark "Duke" if not for over 20 years as
claimed by Duke Fashions but for at least 10 years of which there is prima
facie evidence before this Court, cannot now restrain Duke Fashions.
(vii) Girish Hosiery was never in the business of thermals and from the
documents filed is found to have been engaged in the business of vests,
baniyans and briefs only. It appears to have started manufacturing and
selling thermal / inner wear in which Duke Fashions has established itself,
only to ride the wave of success of Duke Fashions.
(viii) The volume of business of the two firms is clearly indicative of the
aforesaid fact. Though the counsel for Girish Hosiery has relied on
Hindustan Pencils Pvt. Ltd. Vs. Prem Chand Gupta, trading as Universal
Trading Co. 1985 PTC 33 (Delhi) to the effect that a smaller trader is
entitled to protection of his trademark but in the present case Girish
Hosiery‟s trademark is being protected as aforesaid and in view of Girish
Hosiery having been found to have allowed Duke Fashions to develop a
mark and thereafter ride on its goodwill, the said principle is not found
applicable.
(ix) For the same reasons, the judgments cited by the counsel for Girish
Hosiery to the effect that a prior user / adaptor of a coined mark is preferred
in the case of honest concurrent user are not applicable. In the present case,
the user by Girish Hosiery of its trademark and in a manner deceptively
similar to the mark of Duke Fashions is not found to be honest.
I thus do not find Girish Hosiery to be entitled to any interim relief against
Duke Fashions. Consequently, IA No.9607/2008 in CS(OS) No. 1608/2008
is dismissed.
18. Accordingly, I.A. No. 14687/2007 and I.A. No. 9887/2008 in
CS(OS) No. 2500/2007 are disposed of in aforesaid terms. However,
nothing contained herein shall be deemed to be an expression of merits at the
time of final disposal of the suit and is based on a prima facie view of the
matter.
19. Coming now to the application being I.A. No. 178/2009 in CS(OS)
No. 1608/2008 under Section 124 of the Act. It is found that both parties
have pleaded invalidity of registration of the mark of the other. The
application of Girish Hosiery for rectification is already pending. Since the
matter has been gone into thread bare, issues have also been framed. In
view of the pleas raised by Duke Fashions and on being satisfied of the
question of invalidity being required to be adjudicated, it is deemed
expedient to stay the proceedings in the suit to enable Duke Fashions to
make the necessary applications, if so deemed appropriate, and for disposal
of the pending application of Girish Hosiery. The said application is
accordingly disposed of.
RAJIV SAHAI ENDLAW
(JUDGE)
2nd July, 2010
gsr
