Madras High Court
Grand Slam Fitness Pvt vs M/S.Paulsons Beauty & Fashion ... on 8 March, 2022
O.S.A(CAD).Nos.25 & 26 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 08.03.2022
CORAM :
THE HONOURABLE MR.JUSTICE M.DURAISWAMY
and
THE HONOURABLE MRS.JUSTICE T.V.THAMILSELVI
O.S.A(CAD).Nos.25 and 26 of 2022
and
C.M.P.Nos.3321 and 3325 of 2022
Grand Slam Fitness Pvt, Ltd.,
having registered office at
E-540, Greater Kailash II,
New Delhi -110 048 ... Appellant/Defendant in both OSAs
Vs
M/s.Paulsons Beauty & Fashion Private Limited
rep by the Director,
Dr.Sam Paul Sober Ravi Sounder,
Having office at 12, Halls Road,
Kilpauk,Chennai – 600 010. ... Respondent/Plaintiff in both OSAs
PRAYER in O.S.A(CAD) No.25 of 2022 : Appeal filed under Section 13 of
the Commercial Courts Act, to set aside the Common judgment and decree
dated 01.12.2021 passed in O.A.No.765 of 2020 in C.S(CD).No.411 of
2020 .
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PRAYER in O.S.A(CAD) No.26 of 2022 : Appeal filed under Section 13 of
the Commercial Courts Act, to set aside the Common judgment and decree
dated 01.12.2021 passed in O.A.No.766 of 2020 in C.S(CD).No.411 of
2020 .
For Appellant : Mr.R.Sathishkumar
(in both appeal)
For Respondent : Mr.M.S.Bharath
(in both appeal)
COMMON JUDMENT
(Judgment of the Court was passed by T.V.THAMILSELVI, J)
The appellant has filed the above Original Side Appeals against the
Common judgment and decree dated 01.12.2021 passed in O.A.Nos.765
and 766 of 2020 in C.S(CD).No.411 of 2020.
2. The respondent/plaintiff has filed O.A.Nos.765 and 766 of 2020
in C.S(CD).No.411 of 2020 seeking for temporary injunction restraining the
appellant/defendant from infringing the Trade mark and Trading style
''SLAM LIFESTYLE AND FITNESS STUDIO'' by using the offending
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O.S.A(CAD).Nos.25 & 26 of 2022
Trade mark and Trading Style ''GRAND SLAM'' or any other mark or marks
which are similar or in any way deceptively similar to or a colourable
imitation of the respondent/defendant Trade mark ''SLAM LIFESTYLE
AND FITNESS STUDIO'' pending disposal of the above suit.
3. The brief case of the respondent/plaintiff is as follows:-
(i) According to the respondent/plaintiff, they started the gym and
lifestyle fitness studio in the year 2015 under the name SLAM LIFESTYLE
AND FITNESS STUDIO with a registered trademark SLAM LIFESTYLE
AND FITNESS STUDIO with regard to gym business and it is registered in
service Class 41 to run a gym. There are 32 branches actively in operation
spread over Tamil Nadu and Bangalore. It is stated that the
respondent/plaintiff has earned a goodwill and reputation by using this
trademark and trading style.
(ii) The grievance of the respondent/plaintiff is that the
appellant/defendant advertised that they are going to launch their gym
business under the mark ''GRAND SLAM'' and this trademark of the
defendant will mislead and cause confusion to the public, since it is
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O.S.A(CAD).Nos.25 & 26 of 2022
deceptively similar and resembles the mark of the applicant phonetically and
visually.
(iii) The respondent/plaintiff sent a legal notice dated 28.11.2020 to
the appellant/defendant to stop using the registered trade mark with regard
to gym business. A reply notice dated 04.12.2020 was issued by the
appellant/defendant stating that they have been running gym/fitness centre
since he year 2010 onwards. In these circumstances, the
respondent/plaintiff filed the suit.
4. The case of the appellant/defendant is as follows:-
According to the appellant/defendant, they are prior users of the
trademark GRAND SLAM and they registered in the year 2007 itself for
product Class 28 and they are running gym/fitness center from the year
2009/2010 onwards under the brand GRAND SLAM and that the plaintiff
who came into the scene only in the year 2015 does not have any right or
authority to stop the appellant/defendant, from carrying on the gym
business by using their registered mark.
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5. The learned Single Judge after taking into consideration the case
of both sides, allowed the applications by granting interim injunction as
prayed for in favour of the respondent/plaintiff.
6. Aggrieved over the order passed by the learned single Judge, the
defendant has filed the above appeal.
7. Heard Mr.R.Sathishkumar, learned counsel appearing for the
appellant and Mr.M.S.Bharath learned counsel appearing for the
respondent.
8. On a careful consideration of the materials available on record and
the submissions made by the learned counsel on either side, it could be seen
that there is no in dispute that the appellant/defendant started business in
the year 2007 and the respondent/plaintiff started business in the year 2015.
However, as per trademark Registration Certificate, the appellant had
registered Trade mark GRAND SLAM under Class 28 to carry on the
business of manufacturing/supplying the trading apparatus, exercise
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bicycles, joggers, tread mills, exercisers, machines for physical exercise,
apparatus for gymnastics parts etc of fitness equipments. It is clear from
the certificate that the trademark of the appellant was confined to the goods
falling under Class 28. This registration was given in favour of the appellant
in the year 2005. The specific case of the respondent is that they do not
have any objection in the appellant carrying on with the business falling
under Class 28 with their trade name and their only objection is that they are
attempting to get into gym business which is not covered under the
registration granted to them and it will unnecessarily cause confusion in the
minds of the customers since the tradename is phonetically, deceptively and
visually similar. In short the offending tradename ‘GRAND SLAM
FITNESS’ is likely to mislead and cause confusion to the public. The sales
invoices that have been relied upon by the appellant/defendant reflects the
fact that the appellant/defendant had supplied equipments and in some
cases, have set up a home gym. The appellant placed reliance upon the
invoices issued in the name of certain individuals during the year 2009 and
2010.
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9. On a careful scrutiny of the documents filed by the
appellant/defendant, it is very clear that the appellant is involved only in the
business of supply of gym equipments and sports goods. That is
substantiated by the fact that the Trademark Certificate has been issued only
under Class 28 which does not cover health and fitness training. Whereas,
the respondent/plaintiff has been specifically granted trademark registration
under Class 41 which covers Gymnastic Instruction; Conducting Fitness
Classes; Health Club Services [Health and Fitness Training]; Personal
Trainer Service [Fitness Training]. Obviously, the appellant was in the
process of getting into the gym business and on noticing the same, the
respondent has approached this court seeking for appropriate reliefs.
10. The learned Single Judge, while granting interim injunction
observed that the nature of the mark is deceptively similar and the degree of
resemblance between the marks is phonetically, deceptively and visually
similar. This confusion may not arise till the appellant confines to the
business falling under Class 28. The moment the appellant gets into the
gym business/fitness studio, the class of customers who frequent a gym will
be necessarily mislead. The respondent has a registered trademark for a
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O.S.A(CAD).Nos.25 & 26 of 2022
service falling under Class 41 and the appellant has registered trademark for
goods falling under Class 28. Therefore, the parties will have to confine their
operation in line with the class under which they have been given the
registered trademark. The problem will start only when they attempt to go
beyond the class for which the certificate has been issued. However, the
learned Single Judge restrained the appellant to run the business entirely.
Moreover, at that time of arguments the learned counsel for the
respondent/plaintiff also submitted they have no objection in the appellant
carrying on with the business falling under Class 28 with their trade name
and their only objection is that they are attempting to get into gym business
under the style of Home gym which is not covered under the registration
granted to them.
11. In these circumstances, we are inclined to modify the order dated
01.10.2021 made in O.S.Nos. 765 and 766 of 2020 by permitting the
appellant to carry on with the business of selling body building equipments,
fitness trading apparatus, exercise bicycles, joggers, tread mills, exercisers,
machines for physical exercise, apparatus for gymnastics which are
confined to the equipments falling under class 28 of the certificate trade
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mark certificate stands in the name of GRAND SLAM and it is made clear
that the appellant is not permitted to run gym business more particularly
Home gym.
With the above modifications, the Original Side Appeals are partly
allowed. No costs. Consequently, connected Miscellaneous Petitions are
closed.
[M.D., J.] [T.V.T.S., J.]
08.03.2022
msrm/Rj
M.DURAISWAMY, J.
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O.S.A(CAD).Nos.25 & 26 of 2022
and
T.V.THAMILSELVI, J
msrm
O.S.A(CAD).Nos.25 and 26 of 2022
and
C.M.P.Nos.3321 and 3325 of 2022
08.03.2022
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