TEAM CODE: 1332 D

IN THE HON'BLE COURT OF HIGH COURT OF MADRAS, AT

MADRAS

In the Matter of

M/s Mannar & Co. (India) Limited.

Plaintiff

VERSUS

M/s Mancan Computers Private Limited & Ors.

Defendants

MEMORIAL on behalf of the DEFENDANT

12th AMITY LAW SCHOOL NATIONAL MOOT COURT

COMPETITION, 2013

TABLE OF CONTENTS
INDEX

OF

AUTHORITIES.

..3
STATEMENT

OF

JURISDICTION...

...7
ISSUES

PRESENTED......

...............8
STATEMENT

OF

FACTS.

.....9
SUMMARY

OF

PLEADINGS..............................................................................................10
PLEADINGS.
..11PRAYER
RELIEF........................................................................................................28

FOR

INDEX OF AUTHORITIES
BOOKS REFERRED:

VENKATESWARAN ON TRADE MARKS AND PASSING OFF, 5 TH

EDITION

2010, KAPIL WADHWA

INELLECTUAL PROPERTY, 5TH EDITION, BY DAVID BAINBRIDGE

LAW RELATING TO INTELLECTUAL PROPERTY, 5 TH

EDITION,

DR. B.L.

WADHERA

LAW RELATING TO PATENT, TRADEMARK INDICATIONS,

BY

DR. B.L.

WADHERA

INTELLECTUAL PROPERTY RIGHTS,

INTELLECTUAL PROPERTY RIGHTS, BY DR. VIKAS VASHISHT

LAW RELATING TO INTELLECTUAL PROPERTY, BY DR. RAGHBIR SINGH

ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS-A CASEBOOK, BY

BY

J.K. DAS

LTC HARRIS

IPR IN INDIA, BY V.K. AHUJA

VALUATION OF INTELLECTUAL PROPERTY AND INTANGIBLE ASSETS

CASES REFERRED :
1) Sant Ram v. Satnam Overseas 2003 (27) PTC 385 (Del)
2) Wattan singh v, Registrar AIR 1977 Del 1 at 4.
3) Smith v. British Pure Oil (1934 )51 RPC 157 at 163

4) Malar Networks (P) Ltd. vs. Anirudh Prasad (S.A. Nos. 175 and 176 of 2010 and
M.P. nos. 1 and 1 of 2010)
5) Marico Ltd. vs. Agrotech foods Ltd. 2010 (44) PTC 736 (Del)
6) Anwar Elahi vs Vinod Misra And Anr. (1995) 60 DLT 752
7) CCE vs. Dunlop India Ltd. (1985) 1 SCC 260 at pp 266-67.
8) Manohar lal vs. Seth Hiralal AIR 1962 SC 527
9) Cotton Crporation of India Ltd. vs. United industrial bank Ltd (1983) 4 SCC 625
10) United Biscuits (UK) Ltd. V. Asda Asda Stores Ltd. [1997] RPC 513
11) Milment Oftho Industries and Others v. Allergan Inc.
12) Baume and Co. Ltd. v. A.H. Moore Ltd. [1958] RPC 226
13) Gillete UK Ltd. Eden West Ltd. [1994] RPC 279
14) Calvin Klein Inc. USA v. International Apparel Syndicate 1996 PTC 293 (Cal).
15) Pontiac Marina Pte Ltd v. CDL Hotels International Ltd. [1997] FSR 725
16) Commissioners of Inland Revenue v. Muller & Co.s Margarine Ltd. [1901] AC 217
17) N.R. Dongare v. Whirlpool Corp. Ltd. 1996 (5) SCC 714
18) Riggio Tobacco Corporation Ltd. v. NTC tobacco India 2002 (24) PTC 402 (Del)
19) Maxim Ltd. v. Dye [1977] 1 WLR 1155
20) Stannard v. Reay [1967] RPC 589
21) McDonalds Corp v. Joburgers Drive-Inn Restaurant (PTY) Ltd. 1997 (1) SA 1 (A)
22) Premier Luggage and Bags Ltd. v. Premier Co. (UK) Ltd. [2001] FSR 461
23) DurgaDutt v. Navratna Pharmaceutical Laboratories AIR 1965 SC 980
24) E. & J. Gallo Winery v. Consorzio Del Gallo Nero 782 F. Supp. 457, 466 (D. Cal.
1991)
25) Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd
2003 (27) PTC 478 Del.
26) M/s Bikanervala v. M/s AggarwalBikanerwala CS(OS) No.72 of 2004
27) SVS Oil Mills v. SVS Rajkumar 2002 (24) PTC 330
28) H.K. Malhotra v. Jasbir Singh 2003 (26) PTC 488 (Del)
29) B.N. & Company v. Peshawar Soap and Chemical Works 2003(26) PTC 168 (Del)
(DB).
30) Horlicks Limited v. BimalKhamral 2003 (26) PTC 241 (Del)
31) GoyalGramodyogSansthan v. Seth Brothers 2003(27) PTC 142 (Del)

32) Castrol Limited v. Ranjan Sales Corporation 2005(31) PTC 534(Del.)

33) S.R. Thorat Milk Products Pvt. Ltd. v. Sahyadri Dairy 2003(27) PTC 176 (Bom)
34) Filex Systems Pvt. Ltd. v. Rotomac Pens (Gujrat) Pvt. Ltd. 2004 PTC (28) 300 (Del)
35) Alfred Dunhill Limited v. R.P.S. Chawla 2004(29) PTC 39 (Del)
36) Hind Cutlery House v. Malik BartanBhandar 2003(26) PTC 344 (Del)
37) Jaya Ram Banan v. MahinderDara 2003(26) PTC 493 (Del)
38) Mumtaz Ahmad v. Pakeeza Chemicals 2003(26) PTC 567 (All)
39) R.R. Oomerbhoy Pvt. Ltd. v. Court Receiver Hight Court Bombay 2003(27) PTC
580 (DB)(Bom)
40) V & S Vin Spirit AB v. Kullu Valley Mineral Water Co 2005(30) PTC(47) (Del)
41) ErvenWarninkBeslotenVennootschap v. J Townend & Sons (Hull) Ltd. [1973] AC
731
42) Taittinger SA v. Allbev Ltd [1993] FSR 641
43) Dawnay Day & Co. Ltd. v. Cantor Fitzgerald International [2000] RPC 669
44) Kimberley-Clark Ltd v. Fort Sterling Ltd [1997] FSR 877
45) Ewing v. Buttercup Margarine Co. Ltd (1917) 34 RPC 232
46) Morgan-Grampian plc v. Training Personnel Ltd [1992] FSR 267
47) Corn Products v. Shangrila
48) De Cordova v Vick Chemical (1951)68 RPC 103 at 105-106(PC)
49) Seixo v. Provezende (1866) LR 1 Ch 192 at 197
50) Ford v. Foster (1972) LR 7 Ch 611
51) Orr Ewing v. Johnston (1880)13 Ch D 434
52) Saville Perfumary v. June (1941)58 RPC 147.
53) Taw v. Notek (1951) 68 RPC 271 at 273
54) Shaw Wallace & Co. Ltd. v. Superior Industries Ltd. 2003 (27 PTC 63(Del))
55) Jagan prem Nath v. Bhartiya Dhoop Karyalaya ILR 197(11) Delhi 225
56) Amritdhara Pharmacy v. Satya Deo AIR 1963 SC 449.
57) Roche & Co. v. G. Manners & Co. (P) Ltd. AIR 1970 SC 2062, 2064
58) Parle Products v. J.P. & Co. AIR 1972 SC 1359
59) Hearst Corp. v. Dalal Street Communication Ltd. 1996 PTC 126 at 129 (Cal)
60) Ramachander Laxminarayan Karva v. Jagannath Khubchand Karva 2003 (26) PTC
522 (Mad) (DB)

61) Dil Co. International v. Meso Private Ltd. 2003 (26) PTC 515 (Bom) (DB)
62) Winthrop Products v. Wupharma 1998 PTC 213 (Bom)
63) Bansi Dhar Bajaj v. Bajaj Biscuit Products 2004 PTC (28) 680 (IPAB)
64) Colgate Palmolive (India) Ltd. Vs. Hindustan Lever Ltd. AIR 1999 SC 3105
56) Gujarat Bottling Co. Ltd. vs. Coca Cola Company and Others, 1995(5) SCC 545
57) M. Gurudas & Ors. Vs. Rasaranjan & Ors. AIR 2006 SC 3275
58) Shridevi & Anr. vs. Muralidhar & Anr. (2007) 14 SCC 721.
59) S.M. Dyechem Ltd. Vs. M/s. Cadbury (India) Ltd., AIR 2000 SC 2114
60) Dalpat Kumar & Anr. Vs. Prahlad Singh & Ors., AIR 1993 SC 276
61) Marin Burn Ltd. v. R.N. Banerjee 1958-I L.L.J. 247
62) Gujarat Electricity Board, Gandhinagar v. Maheshkumar and Co., Ahmedabad
(1995(5)SCC 545,)
63) Kamal Trading Co. & others vs. Gillette UK Ltd. 1988 PTC 1
64) Bikash Chandra Deb vs Vijaya Minerals Pvt. Ltd.: 2005 (1) CHN 582
65) Antaryami Dalabehera vs Bishnu Charan Dalabehera: 2002 I OLR 531
66) Anwar Elahi vs Vinod Misra And Anr. (1995) 60 DLT 752
67) Multichannel India Ltd vs. Kavitalaya Productions Pvt Ltd. AIR 1999 Madras 59.
68) Sanjeev Kumar & Co. vs Bishnu Prasad AIR 1999 Orissa 90
69) Ramdev Food Products vs. Arvindbhai Rambhai, (2006)33 PTC 281(SC).
STATUTES AND CONVENTIONS REFERRED:
The Trade Mark Act 1999
The Trade Mark and Merchandise Act 1958
Trade related aspects of Intellectual property (TRIPS)
Trade Mark Law Treaty 1994 along with regulations.
WEBSITES REFERRED:
http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-Off.html
http://www.lawisgreek.com/trademark-law-india-and-foreign-brands
http://www.evancarmichael.com/Management/1035/Remedy-for-Trade-Mark-InfringementIndia.html
http://www.bitlaw.com/trademark/infringe.html

http://www.usip.com/pdf/Article_Trademarks/prioruse.pdf
http://www.mondaq.com/india/x/87398/Trademark/Assigning+Licensing+IPR+In+India
http://taxguru.in/excise-duty/effect-making-registration-certificate-applicable-retrospectivedate-based-principle-deemed-equivalence-public-user-mark-extended-excise-law.html
http://www.indiankanoon.org

STATEMENT OF JURISDICTION
The present Defendant submits to the jurisdiction of this Honble Court for final hearing of
the suit filed under Section 134 of the Trademark Act 1999 and interim application seeking a
temporary injunction under Order 39 Rule 1 & 2 CPC read with Section 151 CPC.

ISSUES PRESENTED
ISSUE I: WHETHER THE PLAINTIFF IS ENTILTED TO FILE THE SUIT AND
CLAIM RELIEF?

ISSUE II: WHETHER THE DEFENDANT IS LIABLE FOR TRADEMARK

INFRINGMENT?

ISSUE III: WHETHER THE DEFENDANT IS LIABLE FOR PASSING OFF?

ISSUE

IV:

WHETHER

THE

INTERIM

APPLICATION

SEEKING

TEMPORARY INJUNCTION AGAINST THE DEFENDANT BE ALLOWED?

THE

STATEMENT OF FACTS
1. M/s Mannar & Co. (UK) Limited is a Company incorporated in England in the year 2008.
Mannar is in the business of manufacturing, marketing and sale of computers along with
other computer accessories. It also designed the mark to market its goods. It got the said
mark registered in England in December 2008. Mannar gained immense reputation and
goodwill in England and also in several other countries and their turnover increased
manifold over the next few years.
2. Mr. Mankad is a small player in the computer hardware business and is based in Pune
since the year 2007. He incorporated a Company, M/s Mancan Computers Private Limited
(Mancan) in the year 2009 in Chennai and commenced manufacture and sale of computer
hardware and accessories. Mancan started using the mark from 2009 and applied for
registration of the mark in June 2010. The same is pending with the Trade Marks Registry,
Chennai.

3. Mannar, realizing the potential of the market in India, incorporated M/s Mannar & Co.
(India) Limited (Mannar India) with their registered office in Pune. It applied for registration
of their mark in August 2011 and the Trade Marks Registry, Mumbai, granted registration of
the same in February 2012.
4. When approached the District Court, Pune, and filed a Civil Suit seeking injunctory relief
against Mancan for trade mark infringement and passing off. They also filed an interim
application seeking a temporary injunction against the use of the mark during the pendency
of the suit. The District Court, Pune, did not grant any order but issued a notice to Mancan.
Upon receipt of the notice, Mancan filed a rectification application before the IPAB in
respect of the mark registered by Mannar India and the same is pending before the IPAB.
5. Subsequently, Mannar India filed a Civil Suit against the Directors of Mancan in the High
Court of Judicature at Madras for passing off, damages and account for profits. Mannar
India also submitted an application for an order of ad interim injunction in which the Madras
High Court issued notice.
6. Mancan and its Directors entered appearance and filed appropriate applications raising
preliminary objections. They also filed their counter to the applications filed by Mannar
India.
7. The Madras High Court admitted all applications and fixed a date for final hearing in the
matter, permitting both parties to argue on preliminary issues as well as on merits.

SUMMARY OF PLEADINGS
ISSUE I: WHETHER THE PLAINTIFF IS ENTILTED TO FILE THE SUIT AND
CLAIM RELIEF?
It is submitted that the disclaimer in a registration of trademark has an important bearing.
The trademark when it is subject to conditions and limitations entered in the register any use
of the mark beyond the scope of the rights granted is not protected. Further there arises
certain legitimate concern over the validity of registration of the plaintiffs mark
ISSUE II: WHETHER THE DEFENDANT IS LIABLE FOR TRADEMARK
INFRINGMENT ?
The use of the mark of the defendant is protected by Section 30, which list out the Act which
do not constitute an infringement. Further it is submitted that the defendant is prior user of

10

the disputed mark and has been honest concurrent user. It is also pertinent to note that the
exclusive right claimed by the plaintiff over the disputed trademark have seized to exist by
virtue of the work claimed by the plaintiff becoming a common word i.e. Publici Juris.
Therefore the use of the mark in not an infringement.
ISSUE III: WHETHER THE DEFENDANT IS LIABLE FOR PASSING OFF ?
The essentials of law of passing and other characteristics as stated by Lord Diplock in Erven
Warnik B.V. v. Townend are not satisfied in the present case at hand. From the perusal of the
facts it becomes manifest that the defendant even though being only a small player has been
using the said mark since 2007, which is three years prior to the coming of plaintiff in India,
thereby strengthening the argument that the pre-requisites to constitute the offence of
passing off are not satisfied.
ISSUE

IV:

WHETHER

THE

INTERIM

APPLICATION

SEEKING

THE

TEMPORARY INJUNCTION AGAINST THE DEFENDANT BE ALLOWED ?

The object of injunction is to protect the plaintiff against injury by violation of his right for
which he could not be adequately compensated in damages recoverable in the action. The
three basic principles, i.e. prima facie case; balance of convenience; and irreparable injury, if
considered in a proper perspective in the present facts and circumstances of the case do not
deem proper to be a case of grant of temporary injunction.

PLEADINGS

ISSUE I: THE PLAINTIFF IS NOT ENTILTED TO FILE THE PRESENT SUIT

AND CLAIM RELIEF.
It is humbly submitted that the grant of registration with a disclaimer against exclusive use
of the words MAN or Co to Mannar India.
There is no doubt that the plaintiff is the registered owner of the trademark however it is
pertinent to not that the plaintiff has neither yet used the mark nor has commenced its
business. Registration is only prima facie evidence of its validity and the presumption of

11

prima facie validity of registration is only a rebuttable presumption. 1 The registration of the
mark or similar mark prior in point of time to use by the plaintiff is irrelevant in an action for
passing off and the mere presence of the mark in the register maintained by the trade mark
registry did not prove its use by the persons in whose names the mark was registered and
was irrelevant for the purposes of deciding the application for interim injunction unless
evidence had been led or was available of use of the registered trade marks.2
The distinctiveness of the mark is the hallmark of the law of trademark and this concept is
enshrined in the definition of the trademark. Moreover the term distinctiveness must be
understood not in isolation but in the context of the definition of the phrase trademark. A
mark is said to be infringed by another trader if, even without using the whole of it upon or
in connection with his goods, he uses one or more of the essential features. 3 In Medley
Pharmaceuticals v. Khandelwal Laboritories ltd.4 it was held that the plaintiff had failed to
establish any exclusivity of the mark which is used by them and that the same is commonly
being used bu many companies in the market.(CEFO, CEFO- DT, CEFO-P)
Similarly in the present matter the plaintiff is seeking protection for such a mark, which is
not only devoid of distinctiveness but also commonly being used in the market.
It is submitted that the claim of protection of the trademark cannot exceed conditions and
limitations and is of paramount importance, however the plaintiff in the present case has
acted beyond the scope of the rights granted.
It is further submitted that a trademark is granted registration subject to section 9 & 11 of the
trademark act 1999 and in case where any ground under these sections are satisfied the
registration of the trademark is not allowed.
Section 9(1)(a) provides that the trade marks which are devoid of any distinctive character,
that is to say, not capable of distinguishing the goods or services of one person from those
of another person shall not be registered.
Section 11 provides that save as provided in section 12, a trade mark shall not be registered
if, because of
(a) its identity with an earlier trade mark and similarity of goods or services covered by the
trade mark; or
1

Marico Ltd. vs. Agrotech foods Ltd. 2010 (44) PTC 736 (Del)
Malar Networks (P) Ltd. vs. Anirudh Prasad (S.A. Nos. 175 and 176 of 2010 and M.P. nos. 1 and 1 of 2010)
3
Dr. B. L. Wadehra, Law Relating Intellectual Property Rights; 5th Edition Page 175.
4
2005 (31) PTC 515 (Bom)
2

12

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or
services covered by the trade mark, there exists a likelihood of confusion on the part of the
public, which includes the likelihood of association with the earlier trade mark.
From the perusal of the above provisions it becomes manifest that the registration granted to
the plaintiff was invalid as at the time of the registration of mark of plaintiff, the mark of the
defendant was already in use and the application for registration was pending. Further as
already discussed above the plaintiffs mark is devoid of any distinctive character as it
nearly resembles the mark of the defendant as to be likely to deceive or cause confusion.
It is pertinent to bring to the notice of this Honble court relevant portion of section 124 of
trademark act 1999 which provides that
(1) Where in any suit for infringement of a trademark
(a) The defendant pleads that registration of the plaintiffs trade mark is invalid; or
(b) The defendant raises a defence under clause (e) of sub-section (2) of section 30 and the
plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying
the suit (hereinafter referred to as the court), shall,
(i) If any proceedings for rectification of the register in relation to the plaintiffs or
defendants trade mark are pending before the Registrar or the Appellate Board, stay the suit
pending the final disposal of such proceedings;
Considering the fact that the defendant has already made a rectification application before
the IPAB which is still pending, it is humbly submitted that the court may alternatively stay
the present suit pending the final disposal of the proceeding before the IPAB.

ISSUE

II:

THE

DEFENDANT

IS

NOT

LIABLE

FOR

TRADEMARK

INFRINGMENT.
(i)The question of Prior use?
It is respectfully submitted that the exclusive right to obtain registration cannot obtain
against the rights of prior users of the same or similar trademarks. The necessary condition
are:-

13

a) The mark must have been used from a date prior to use of the registered trade marks ,or its
date of registration whichever is earlier
b) The prior user claimed must be by the proprietor himself;
c) The user claim must be continuous
The word continuous is not one which is of strict definition. It does not mean a sale of
goods a sale every week or even a sale every month.5
In Daimler Chrysler v. Alavi, The court said Continous use is a commercial concept. When
dealing with continuos use for the purposes of the Act, Pumfrey J. said that a defendant
could rely upon " a commercially relevant use capable of being continued. Thus an
interrupted use in respect of which a substantial goodwill existed should, in my judgment
suffice.
It might be that a similar trademark is operating in the markets before the registration and
use. The subsequent registered trade mark owner is not entitled to interfere with or restrain a
prior user of an identical or nearly resembling trade mark in relation to the goods or services
on which that prior user has been continuously using the similar trade mark from a date prior
to the registration of subsequent mark or from a date prior to the use of subsequent mark
for same goods or services. The fact of the matter is Mr. Mankad is a small player in the
computer hardware business and is based in Pune since the year 2007 and subsequently
starts using the Trademark continuously from 2009. The pause between 2007 to 2009 in the
continuous use of the Trademark is from the fact that he relocated to Chennai which by all
means is an honest industrial or commercial matter which should not be held prejudicial to
Mankan.

(ii)Honest Concurrent User

It is humbly submitted that there operate many unregistered trademarks in small pockets in
various markets within India as the registration of a mark is not mandatory. There is a lack
5

Smith v. British Pure Oil (1934 )51 RPC 157 at 163

14

of information about the information about the operations of unregistered trademarks

prevalent in India. The information of trademarks protected in foreign countries is also not
easily available within India. A small trader may have honestly selected a trademark and
used it in the local or regional market without any knowledge of its use in a foreign country
or even in a market within India. A similar mark may be in operation at about the same time
for similar or dissimilar goods or services. It is fair that both need to be protected by law,
once the honest contemporary use is proved. Moreover a user of any of such trade marks on
his own or in collaboration with others may seek to expand his market and claim prior or
concurrent user status.
In section 12(3) of 1958 Act the registrar has discretion to make exceptions in certain cases
viz. (i) the case of honest concurrent user, (ii) in case of other special circumstances (iii) in
the case of prior use.6
Section 12 gives to the registrar discretion of the following two types:
a) To inquire into the bona fides of an applicant for registration of mark which is identical or
similar to a trademark(whether registered or unregistered) in respect of the same or similar
goods or services claiming to be either prior user or honest concurrent user and to allow such
mark to go on the register with such conditions and limitations as the Registrar may deem fit
and proper to impose, and
b)to enquire into the bona fides and rights of more than ne applicant for registration claiming
concurrent use of identical or resembling trade marks in respect of the same or similar goods
or services, and to allow concurrent registration of such marks in the names of more than one
proprietors with such conditions or limitations as the registrar may deem proper.
Satisfaction of other Registration Requirements: Registration on basis of honest
concurrent user is granted only if the other requisites for registration are satisfied for
example, the requirements of distinctive character or capacity to distinguish under section
9.7 In arriving at conclusion if applicant is entitled to concurrent registration, the Registrar
takes into consideration the following matters:

6
7

The honesty of adoption and use;

Section 34 of 1999 Act

Electric Appln. (1958) RPC 175 at 178

15

The quantum of concurrent use of trade mark shown by the applicant having regard
to duration, area and volume of trade;

The chances of confusion resulting from the similarity of the applicants and
opponents mark, as a measure of the public inconvenience or public interest;

Whether any concrete instances of confusion have infact been proved; and

The relative inconvenience which ould be caused to the parties and

The amount of inconvenience which would result to the public if the applicants
mark is concurrently registered.8

Continuous user need not be continuous as well as uninterrupted to satisfy the requirements
of section 12. It also need not be of great magnitude. A consistent use of the mark in a
commercial sense is sufficient. The quantum of production and sale can vary from time to
time. There can even be interruptions in the business for many reasons, but they do not affect
the status of concurrent user, if the use has been in the course of the trade and was resumed
after interruption.

The necessity of invoking section 12 would arise only when the

similarity between the applicants and the opponents mark is such as is likely to cause
confusion in the public including likelihood of association with other marks. The registration
under section 12 is justified even if the simultaneous use of the marks will result in some
amount of confusion, as the existence of the possibility of confusion is admitted in the
provision.10Its scope is not limited to cases where there is slight possibility of confusion .
The provision is enacted to vindicate the rights of applicant and words used are sufficiently
wide enable the Registrar to permit the registration of the same or nearly identical trade
marks for even the same or similar goods or services by more than one proprietor.
If both the opponents and applicants have used their marks alongside each other, than each
of them, provided honest in use , should prima facie be entitled to registration just as much
as the other. The fact that there have been many or will be confusion from time to time is no
bar to such registration.11 The relative hardship to the parties and the inconvenience of the
8

Spillers
Wattan singh v, Registrar AIR 1977 Del 1 at 4.
10
Piries Appln. (1933) 50 RPC 148 at 158 (HL)
11
Buler Trade mark,(1975) RPC 275 at 291
9

16

public are matters of great importance. Where the applicants has used the mark for long
period prior to the use of opponents mark, the hardships, which would considerably, exceed
the hardship which would be caused to the opponent by registration.12
In Dalip Chand Aggarwal v. Escorts13 6 IPLR 1981 p 1, the applicant could not obtain
registration even after establishing honest concurrent and prior user. The court said that for
registration on the basis of honest concurrent use it was not necessary for the applicants
business along with the extent of the business interest of the opponents and the interest of
public all, had to be consider in deciding whether the applicants mark should be registered
or not. 14

ISSUEIII: THE DEFENDANT IS NOT LIABLE FOR PASSING-OFF.

12

Holts Appln,(1975) RPC 289 at 292;London Rubber v. Durex, AIR 1963 SC 1882 at 1889.s
IPLR 1981 p 1
14
Sant Ram v. Satnam Overseas 2003 (27) PTC 385 (Del)
13

17

Passing Off is a right that protects the goodwill in a business or the way in which a business
packages, markets and sells its products or services.
It is a common law right and not governed by any Act of Parliament but has developed
through case law since 1618 and can be used to stop someone else benefiting from another
trader's business reputation (including the unauthorized imitation of names and the 'get up' or
"look and feel" of goods or services and used in conjunction with trademark infringement
actions or to protect those marks that are not capable of protection as registered trademarks.
In passing off, the relevant question is not whether there was a risk of confusion because the
defendants name is similar to the claimants; the relevant question is whether the
defendants use of his name in connection with his goods or his business would be taken as a
representation that his goods or business were, or had some connection with, the goods or
business of the claimant, giving rise to harm, or the risk of harm, to the goodwill and
reputation which the claimant was entitled to protect. To succeed, the claimant would need
to prove that, at the time of the acts complained of, he had a significant reputation and,
secondly, that the actions of the defendant gave rise to a false message which would be
understood by a not insignificant section of his market that his goods had been endorsed,
recommended or approved of by the claimant. The entire trade dress and get-up of the
product had to be taken into account when determining whether there had been a
misrepresentation, not just the part of the product which best suited the arguments of the
parties. It is important to note that the law of passing off is not protecting the product but the
indications of where the product comes from.
There are usually three requirements needed to establish a passing off claim.
Goodwill - It is the benefit of the good name, reputation and connection of a business. It is
the attractive force that brings in custom. It is the one thing that distinguishes an established
business from a new business. Goodwill is protected by passing off and whilst this may be
associated with a particular name or mark used in the course of trade, this area is wider than
trade mark law in terms of the scope of marks, signs, materials and other aspects of trader
get up that can be protected. The owner of the goodwill has a propriety right that can be
protected by an action in passing off. But if the goodwill of a business is only affected due to
competition in the market, this is not passing off as there is no misrepresentation.
A man who engages in commercial activities may acquire a valuable reputation in respect of
goods in which he deals, or of the services which he performs or of his business as an entity.
The law regards such a reputation as an incorporeal piece of property, the integrity of which
the owner is entitled to protect.15
It is pertinent to note that the words reputation and goodwill are often used
interchangeably but it is really in connection with goodwill that passing off is concerned. It
is possible, after all, to have a reputation without goodwill and existence of reputation
15

H.P Balmer Ltd. v. J Bollinger SA [1978] RPC 79 at 93

18

without any associated goodwill was fatal to a claim in passing off.16 The Budweiser name
for beer was well known in the UK but, in the absence of a trading presence, the claimant
could not establish the necessary goodwill to sustain an action in passing off. 17 Merely
copying the name or style of another trader is not, per se, sufficient for a passing off action.
Goodwill is related to the area where it is claimed to exist. For example, a company that had
considerable goodwill in say the USA but was virtually unknown in the UK would not be
able to claim pre-existing goodwill in a case brought in the UK.
From the perusal of the facts it becomes manifest that the defendant in the present matter is
the prior user as it was in operation even before when the plaintiff had come in India and its
honest industrial & commercial use can be traced from the fact that it has gained immense
recognition and reputation over the years.
The plaintiff claimed that they enjoyed a goodwill and reputation in India, and that the
defendants in the course of their trade, used the plaintiffs goodwill and reputation to dell
their own product. Now contrary to this, it has been very well mentioned in the factsheet that
the said mark of the defendant had gained immense recognition and reputation in the
computer hardware business.18They had their own reputation and customers and the
defendants used their own reputation to sell their own products. They were not banking on
the plaintiffs goodwill for sale.
In Group Lotus Plc v Malaysia Racing Team19, Peter Smith J held that the parties businesses
retained separate goodwill; Group Lotus as a car manufacturer and Team Lotus as a Formula
1 racing team. Further, the specialist consumer of each of these activities was unlikely to be
confused between them. If there were any initial confusion, it could easily be clarified by
media commentators and journalists. Thus Team Lotus could not be liable in passing off.
Neither, in the absence of confusion, could it be liable for trade mark infringement.
In the case of Smithkline Beecham v. V.R. Bumtaria 20 the plaintiff applied for permanent
injunction to restrain the defendant from infringing the trademark, passing off, damages,
delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical
preparations. Defendants were using the similar name ACIFLO for their product of the same
drug in India. Plaintiffs were not doing business in India for the particular product and
argued that since their advertisements are been published in medical journals hence they
have a transborder reputation and defendants should be stopped to use the similar trademark
which creating deception in customers.

16

Anheuser Bush Inc v. Budejovicky Budvar [1984] FSR 413

Calvin klein inc v. International Apparel syndicate [1995] FSR 515
18
Factsheet
19
[2011] EWHC 1366 (Ch)
20
[MANU/DE/2840/2005]
17

19

In Anheuser-Busch v Budejoicky21 an American brewing company that sold its beer

exclusively on American Air Force bases in the UK could not restrain a Czech company
form selling its beer under eth same name. Although the American Company had a
substantial reputation as it did not have a business in the UK it did not have any good will.
In Alain Bernardin v Pavillion Properties 22 the plaintiffs owned a nightclub in Paris called
the Crazy Horse Saloon. They advertised in the UK and drew customers from the UK.
However it was not able to obtain an injunction stop the defendant opening a night club with
the same name in London.
In Athletes Foot Marketing Associates v Cobra Sports Ltd 23 the plaintiffs carried on
business in the USA and planned to expand into the UK. Before they had done so the
defendants established a shop called Athletes Foot Bargain Basement. As the plaintiffs
had not begun business in the UK they did not have any good will and so could not obtain an
injunction under passing off.
Court said that mere publication of an advertisement in a journal cannot establish a transborder reputation. Such reputation if any is confined to a particular class of people, i.e., the
person subscribing to the said specialized journals and the same cant be said to be extended
to the general consumers. Thus any adverse effect on the firm in such a case cant be
amounted to the offence of passing off.
In the South African case of Lorimar Productions Inc v. Sterling Clothing Manufacturers
(Pty) Ltd24 the Supreme Court considered that character merchandising was not particularly
well known and, in the absence of evidence to the contrary, it could not be assumed that the
man in the street would have any knowledge of it. The claimant owned the rights in
television series Dallas and failed to show an association in the minds of the public between
the goodwill in the series and clothing or restaurants owned by the defendant which used
names, locations and titles from the series.
Misrepresentation - Any misrepresentation must be made by a trader in the course of trade
and it must have led to confusion or the likelihood of confusion in the mind of the customer.
A misrepresentation must be material i.e. more than momentary or inconsequential. It must
be a reasonably foreseeable consequence that as result of the defendants misrepresentation
the plaintiffs goodwill will be damaged.
However confusion alone may not amount to a material misrepresentation. "No one is
entitled to be protected against confusion as such. Confusion may result given the collusion
of two individual rights or liberties and where that is the case neither party can complain;
they must put up with confusion as one of the misfortunes, which occur in life. The
protection to which a man is entitled is protection against passing off which is quite a
21

[1984] FSR 413 CA

[1967] FSR 341
23
[1980] RPC 343
24
1981 (3) SA 1129 (T)
22

20

different thing from mere confusion. If all that a trader is doing is to carry on trade in his
own name and in disposing of or advertising his goods does no more than make the perfectly
true statement that the goods are his goods, no other trade is entitled to complain."25
The question of misrepresentation cannot arise because in India, the defendant was the prior
user. As has been clearly mentioned in the factsheet, the defendant was continuously using
the said mark since 2009 and had applied for registration of the mark in 2010, whereas, the
plaintiff had applied for registration of the said mark in August 2011.26
Also it has been mentioned that the plaintiff got their mark registered in England in
December 2008, and the defendant was continuously using the said mark since 2009. Now it
is also possible that the plaintiff may have registered on 31 st December 2008 and the
defendant may have been using the mark since 1 st January 2009. So internationally also, it
cannot be inferred that the plaintiff was the prior user, and therefore we cannot say that the
defendant misrepresented his goods as that of the plaintiff.
The matter of fact that it applied for registration and the same is pending signifies that the
defendant never intended to either misrepresent or falsely take unfair advantage of the
plaintiffs mark which came in existence only after 5 years since the defendant had been
using the mark. Therefore question of misrepresentation does not arise.
In B&S Ltd v Irish Auto Trader Ltd. 27, Mr. Justice McCracken refused to grant a
preliminary injunction, notwithstanding a finding of passing-off, where the infringer had
acted bona fide in extending an established business from another jurisdiction into Ireland
and it was likely that any confusion would be limited.
In the case of Radio Taxicabs (London) Ltd (t/a Radio Taxis) v. Owner Drivers Radio Taxi
Services Ltd (t/a Dial-a-Cab)28, the claimant accepted that its trading name, Radio Taxis, was
generic and had not acquired a secondary meaning. Rather, its case was that the defendants
behaviour in registering the domain name radiotaxis.com and creating an automatic link
from the web address www.radiotaxis.com to its own website pages amounted to passing
off. The judge held that the defendant did not intend to use the domain name to pass itself off
as, or being connected with, the claimant or to divert its business. The defendant, instead,
intend to promote its services as a supplier of radio taxis, particularly internationally. The
domain name was not, therefore, being used as an instrument of fraud (BT v. One in a
Million [1999] FSR 1 CA). Furthermore, there was no passing off. Although the claimant
was able to show that it was most commonly known as Radio Taxis, it had failed to put in
evidence as to how it was perceived by the public and consequently failed to discharge the
burden upon it to show the requisite reputation. Taking into consideration the generic nature
of Radio Taxis, the fact that there had been no confusion for the two years radiotaxis.com
25

Green MR in Marengo v Daily Sketch [1948] 1 All ER 406 HL.

Facsheet
27
[1995] 2 I.R. 142
28
(J Randall Q.C.; 12.10.01)
26

21

had been registered and the judges findings on motive, there was also no misrepresentation
either.
In S.B.L. Limited v. Himalaya Drug Co.29, where two rival marks Liv. 52 and Liv-T
contained a common feature Liv, it was held that the common feature is not only
descriptive but also publici juris; a customer will tend to ignore the common feature and
will pay more attention to uncommon features, i.e., 52 and T. The two do not have such
phonetic similarity as to make it objectionable. The Cartons of the two products respectively
of the plaintiff and of the defendant show that there is no possibility of one being accused of
being deceptively similar with the other, and the customer mistaking one with the other,
even by recollecting faint impressions. Therefore the proprietor of Liv 52 was not entitled to
the grant of an injunction the use of Liv-T.
In Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceutical Ltd. 30, the
plaintiff was selling it product allopathic medicinal preparation under trade mark Enerjex.
Plaintiffs grievance was adoption of trade mark Enerjase by defendant for selling his
Ayurvedic medicinal preparation. Prefix for both marks viz. Enerj was common and
abbreviation of generic name energy. Suffix to said words jex and jase were totally
dissimilar not creating confusion in mind of users especially when visual impression of the
said two trade names was completely different. Total sound effect of these two words lacked
any similarity. The court held that no infringement of trade mark of plaintiff was noticed.
Injunction was refused.
The court held in the case of Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises
& Ors.31, that the word Heat Pillar was a generic word. No manufacturer can have
exclusive right to use of this word.
In this case the plaintiffs were using the word Gopi while the defendants are using the
word Belco before the word Heat Pillar. The court held that between the words Gopi
and Belco there was clear phonetic distinction. There was thus no case for passing off
established. The court refused to grant temporary injunction restraining the defendant for
using its trade mark.
Damage - This means establishing actual or likely financial loss. This could include loss of
profit in an existing market, loss of reputation or loss of opportunity to expand.
In the present case, there has been no evidence or statistics showing any financial loss being
caused to the plaintiff as a result of the plaintiffs acts. Also, the defendant has its own
reputation and caters to its own set of customers, therefore, no likelihood of damage can be
foreseen.

29

AIR 1998 Delhi 126

AIR 1998 Mad 347
31
AIR 1999P&H 231
30

22

In the case of Kirloskar Propreitary Ltd. v. Kirloskar Dimensions Pvt. Ltd 32, infringement of
trade mark was alleged. A temporary injunction was sought by the plaintiff. The respondent
had already commenced business in the name of KIRLOSAR as corporate name. The trial
Court dismissed the application of the plaintiff. The plaintiff appealed against the decision of
the trial Court to the High Court of Karnataka. The High Court dismissed the appeal on the
ground that although the plaintiff appellant had made out prima facie case, temporary
injunction could not be granted on the ground of balance of convenience and loss which
would accrue to the defendant.
In BMW Canada Inc. v. Nissan Canada Inc.33, the Federal Court of Appeal stated that actual
or potential damages cannot be presumed and there must be evidence proving the same.
However in the present matter there is not even an iota of evidence that the plaintiff incurred
or will be incurring any damage in course of its business.
Therefore in the light of arguments put forth and authorities cited it is most respectfully
submitted that no case of passing off can be made out against the present defendant and
therefore the defendant is not liable for passing off.

32

33

1997 PTR 1
2007 FCA 255 (CanLII), 2007 FCA 255 at para. 35, 60 C.P.R. (4th) 181

23

ISSUE IV: THE INTERIM APPLICATION OF TEMPORARY INJUNCTION

AGAINST THE DEFENDANT BE ALLOWED.
Interim injunctions are court orders used to prevent a party from doing a particular act,
which will in some way or form damage/injure the other party or his property. The remedy
could be available where an alleged wrongdoing is to be carried out in the future and there is
not enough time for the dispute to be brought to court and resolved before the damage is
done. The relief is both temporary and discretionary.
"The object of the interlocutory injunction is to protect the plaintiff against injury by
violation of his right for which he could not be adequately compensated in damages
recoverable in the action if the uncertainty were resolved in his favour at the trial. The need
for such protection has, however, to be weighed against the corresponding need of the
defendant to be protected against injury resulting from his having been prevented from
exercising his own legal rights for which he could not be adequately compensated.34
Grant of an interim relief in regard to the nature and extent thereof depends upon the facts
and circumstances of each case as no strait-jacket formula can be laid down. 35 Grant of
temporary injunction, is governed by three basic principles, i.e. prima facie case; balance of
convenience; and irreparable injury, which are required to be considered in a proper
perspective in the facts and circumstances of a particular case.36
In Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd.,37 this court observed that the
other considerations which ought to weigh with the Court hearing the application or petition
for the grant of injunctions are as below :
(i) Extent of damages being an adequate remedy;

34

Gujarat Bottling Co. Ltd. v. Coca Cola Company and Others, 1995(5) SCC 545
M. Gurudas & Ors. v. Rasaranjan & Ors. AIR 2006 SC 3275; and Shridevi & Anr. vs. Muralidhar & Anr.
(2007) 14 SCC 721.
36
S.M. Dyechem Ltd. v. M/s. Cadbury (India) Ltd., AIR 2000 SC 2114
37
AIR 1999 SC 3105
35

24

(ii) Protect the plaintiffs interest for violation of his rights though however having regard to
the injury that may be suffered by the defendants by reason therefor ;
(iii) The court while dealing with the matter ought not to ignore the factum of strength of one
partys case being stronger than the others;
(iv)No fixed rules or notions ought to be had in the matter of grant of injunction but on the
facts and circumstances of each case- the relief being kept flexible;
(v) The issue is to be looked from the point of view as to whether on refusal of the injunction
the plaintiff would suffer irreparable loss and injury keeping in view the strength of the
parties case;
(vi)Balance of convenience or inconvenience ought to be considered as an important
requirement even if there is a serious question or prima facie case in support of the grant;
(vii) Whether the grant or refusal of injunction will adversely affect the interest of general
public which can or cannot be compensated otherwise.
The phrases `prima facie case, `balance of convenience and ` irreparable loss are not
rhetoric phrases for incantation, but words of width and elasticity, to meet myriad situations
presented by mans ingenuity in given facts and circumstances, but always is hedged with
sound exercise of judicial discretion to meet the ends of justice. The facts rest eloquent and
speak for themselves. It is well nigh impossible to find from facts prima facie case and
balance of convenience.38
1. Prima facie case: The expression "prima facie" means at the first sight or on the first
appearance or on the face of it, or so far as it can be judged from the first disclosure. Prima
facie case means that evidence brought on record would reasonably allow the conclusion that
the plaintiff seeks. The prima facie case would mean that a case which has proceeded upon
sufficient proof to that stage where it would support finding if evidence to contrary is
disregarded.39
A prima facie case does not mean a case proved to the hilt but a case which can be said to be
established if the evidence which is led in support of the same were believed. While
38
39

Dalpat Kumar & Anr. v. Prahlad Singh & Ors., AIR 1993 SC 276
Black law dictionary

25

determining whether a prima facie case had been made out, the relevant consideration is
whether on the evidence led it was possible to arrive at the conclusion in question and as to
whether that was the only conclusion which could be arrived at on that evidence.40
"Prima facie case" means that the Court should be satisfied that there is a serious question to
be tried at the hearing, and there is a probability of Plaintiff obtaining the relief at the
conclusion of the trial on the basis of the material placed before the Court. "Prima facie
case" is a substantial question raised bona fide which needs investigation and a decision on
merits. The Court, at the initial stage, cannot insist upon a full proof case warranting an
eventual decree. If a fair question is raised for determination, it should be taken that a prima
facie case is established. The real thing to be seen is that the plaintiffs claim is not frivolous
or vexatious.41
As already pointed out earlier the plaintiff does not have the title to suit for infringement
considering the fact that the plaintiff was granted registration with a disclaimer against
exclusive use of the words MAN or Co and from perusing the ANNEXURE A it
becomes manifest that the plaintiff in the mark have used the two expressions separately.
Moreover Section 30(1) of the act provides that nothing in section 29 shall be construed as
preventing the use of a registered trade mark by any person for the purposes of identifying
goods or services as those of the proprietor provided the use
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or
repute of the trade mark.
From the facts it becomes manifest that the defendant was using the mark and had also
applied for registration of the same even before when the plaintiff had come to India which
strengthens the argument that the defendant was using the said mark in accordance with
honest practices without taking any unfair advantage of the mark of plaintiff.
It is further pertinent to note that there arises no trademark infringement with respect to
generic words like man & co which are used in common parlance and therefore the
40
41

Marin Burn Ltd. v. R.N. Banerjee 1958-I L.L.J. 247

Gujarat Electricity Board, Gandhinagar v. Maheshkumar and Co., Ahmedabad (1995(5) SCC 545,)

26

mark lacks exclusivity and therefore the exclusive right claimed by the plaintiff over the
disputed trade mark ceases to exist by virtue of the words claimed by the plaintiff becoming
Publici Juris and therefore the words that are within the public domain cannot be claimed
as exclusive proprietorship.
Therefore, it is humbly submitted that in the present matter no prima facie case has been
made out against the defendant.
2. Balance of Convenience: It is where there is doubt as to the adequacy of the respective
remedies in damages available to either party or to both, that the question of balance of
convenience arises. The Court shall lean in favour of introduction of the concept of balance
of convenience, but does not mean and imply that the balance would be on one side and not
in favour of the other. There must be proper balance between the parties and the balance
cannot be an one-sided affair.42 Balance of convenience means, comparative mischief for
inconvenience to the parties. The inconvenience to the petitioner if temporary Injunction is
refused would be balanced and compared with that of the opposite party, if it is granted. 43 In
applying this principle, the Court has to weigh the amount of substantial mischief that is
likely to be done to the applicant if the injunction is refused and compare it with that which
is likely to be caused to the other side if the injunction is granted.44
In the present matter it is pertinent to note that the defendant had applied for registration in
2010 and has been using the mark since 2009 for which it has gained recognition and
reputation in the computer hardware business. On the other hand the plaintiff has just
registered the mark and has not put the mark in use yet as effectively as the defendants have
and therefore in all probable situation if the interim injunction is granted will adversely
effect the defendants more than it would if the injunction is not granted.
3. Irreparable injury: the existence of a prima facie case alone does not entitle the
application for temporary injunction.45 The applicant must further satisfy the court by
showing that he will suffer irreparable injury if the injunction as prayed is not granted and
that there is no other remedy open to him by which he can protect himself from the
consequences of apprehended injury. Granting of injunction is an equitable relief and such a
42

Bikash Chandra Deb v. Vijaya Minerals Pvt. Ltd.: 2005 (1) CHN 582
Antaryami Dalabehera v. Bishnu Charan Dalabehera: 2002 I OLR 531
44
Anwar Elahi v. Vinod Misra And Anr. (1995) 60 DLT 752
45
CCE v. Dunlop India Ltd. (1985) 1 SCC 260 at pp 266-67.
43

27

power can be exercised when judicial intervention is absolutely necessary to protect rights
and interests of applicant.46 An injury will be regarded as irreparable where there exists no
certain pecuniary standard for measuring damages.47
It is humbly submitted that no doubt the plaintiff is the registered owner of the trademark
however it is pertinent to not that the plaintiff has neither yet used the mark nor has
commenced its business. Registration is only prima facie evidence of its validity and the
presumption of prima facie validity of registration is only a rebuttable presumption. 48 The
registration of the mark or similar mark prior in point of time to use by the plaintiff is
irrelevant in an action for passing off and the mere presence of the mark in the register
maintained by the trade mark registry did not prove its use by the persons in whose names
the mark was registered and was irrelevant for the purposes of deciding the application for
interim injunction unless evidence had been led or was available of use of the registered
trade marks.49
Therefore there arises no question related to any loss or damage which plaintiff could incur
which is irreparable in nature.
It is pertinent to take into account the case of Malar Networks (P) Ltd. v. Anirudh Prasad, 50
which has facts and issues somewhat similar to the present case. The court held that the mere
presence of the mark in the register maintained by the Trade Mark Registry did not prove
that the mark had been used. Since the domain names MALARTV.COM &
MALARTV.IN and trade name MALAR TV did not earn goodwill or reputation as a
result of non-use; a case of passing off cannot be made against the Defendant. It was held
that any word, abbreviation or acronym which had become 'public juries' could not be
exclusively claimed by anyone. Further, the Plaintiff had not commenced the business so as
to sustain any loss either towards infringement or towards passing off. Therefore, the balance
of convenience was held to be in favour of the Defendant. Further, in the absence of noncommencement of business, the issue of irreparable injury caused to the Plaintiff did not
arise. The Madras High Court, therefore, upheld the Single Bench Order directing the

46

Manohar lal v. Seth Hiralal AIR 1962 SC 527

Cotton Crporation of India Ltd. v. United industrial bank Ltd (1983) 4 SCC 625
48
Marico Ltd. v. Agrotech foods Ltd. 2010 (44) PTC 736 (Del)
49
Malar Networks (P) Ltd. v. Anirudh Prasad (S.A. Nos. 175 and 176 of 2010 and M.P. nos. 1 and 1 of 2010)
50
Id.
47

28

dismissal of applications and modification of MALAR TV to ARUNS MALAR.TV

which was complied with by the defendants.
Therefore in the light of the arguments put forth and cases cited it is most respectfully
submitted before this Honble court to dismiss the interim application of temporary
injunction.

PRAYER

Wherefore in the light of the facts stated, issues raised, arguments advanced and authorities
cited, it is most humbly prayed before this Honorable Court that it may be pleased to
declare:

1- That the plaintiff is not entitled to file a suit and claim relief on the disclaimed portion of
the trade mark against exclusive use.
2-That the defendant is not liable for trademark infringement.
3- That the is also not liable for Passing-off.
4-That the present suit and interim application seeking the temporary injunction against the
defendant should not be allowed or in alternate stay the present suit with respect to
trademark infringement.

And pass any other order that it deems fit and proper in the interest of justice.
All of which is respectfully submitted.
Date: 1 March, 2013
Place: Madras

29

Counsels for the defendant

30