Whether a statement made before the Trademark Registry in response to an examination report will act as an estoppel in a passing off action was the primary question in the instant suit. The Plaintiff, Insecticides (India) Limited (IIL) on the basis of its rights in the marks VICTOR and VICTOR formative marks in respect of insecticides, filed suit against Parijat Industries (India) Pvt. Ltd (Parijat) before the Delhi High Court. IIL alleged passing off and sought restraint order against Parijat from using the mark VICTOR 80 in respect of insecticide or any other deceptive similar marks. Both sides consented to the suit being disposed off on the basis of pleadings and documents without adducing oral evidence.
- They are one of the premier names in the crop protection industry, VICTOR being one of their popular trademarks. They also have variants such as 'VICTOR GOLD', 'VICTOR PLUS' and 'VICTOR SUPER'.
- The mark 'VICTOR' was adopted in the year 2002 and has been in continuous and uninterrupted use.
- IIL applied for registration in Class 05 for 'VICTOR GOLD, 'VICTOR', 'VICTOR PLUS' and 'VICTOR SUPER' in 2011, 2012 and 2015 respectively and the applications are pending.
- In the examination report for aforementioned marks, few other 'VICTOR' marks in Class 05 were cited including that of Parijat (that included insecticides); however, majority of other cited trademarks pertained to completely different set of goods such as pharmaceuticals, nutritional products, mosquito coils, etc. but none pertained to insecticides. Therefore, in response to examiner's report, IIL submitted that their trademark is confined to insecticides, which is different from the specification of goods of the cited marks.
- The general response submitted was an inadvertent error on part of IIL’s agent.
- Parijat is engaged in manufacture and sale of insecticides and other agro based chemicals. In November, 2015, IIL came to know of the use of VICTOR 80 by Parijat in relation to insecticides. The cease and desist letters sent were not acted upon by Parijat.
- IIL is estopped from challenging Parijat's right to use the trade mark 'VICTOR 80' for pesticides due to its own admission in the registration proceedings with respect to the marks 'VICTOR GOLD' and 'VICTOR' where in response, to the examination report, it stated that the specification of goods under the cited marks are different and no confusion or deception would arise even if the marks exist in the same market.
- IIL is now taking an opposite stand than they took before the Trademark Registry. 'VICTOR' is not an invented word but it is a common dictionary word and IIL cannot claim exclusive right over it.
- They honestly adopted the trade mark 'VICTOR 80' in respect of pesticides and obtained registration in the year 2010 and have been openly and extensively using the mark. Thus, have the right to its use.
- Passing off does not arise as the rival products are sold under different packaging, get up and appearance.
- IIL was aware of the VICTOR 80 mark in the year 2012 when responding to the examination report and therefore, there is delay and laches.
In replication IIL submits:
Rival products are same and have common trade channels. Parijat has started using the mark only in October, 2015, and there is no delay in filing the action. An inadvertent error on the part of IIL’s agent will not defeat their common law rights.
The court after considering the pleadings, documents and submissions held:
- It is not disputed that IIL’s 'VICTOR', 'VICTOR GOLD', 'VICTOR PLUS' and 'VICTOR SUPER' marks are in use since the year 2002. The court noted that even though Parijat had claimed use of the mark VICTOR 80 since the year 2010 produced documents only from the year 2015. Further, the documents prove use of Parijat’s mark only from the year 2015, therefore, their contention regarding delay and laches fail.
- Regarding the issue of estoppel and admission on the basis of IIL’s response to the examination report that specification of goods under the conflicting marks are different and there is no chance of confusion, the statement was factually incorrect. It is also against the statutory scheme of Trademarks Act. Thus, it was clearly an inadvertent error in stating that the goods of Parijat and the goods of IIL were different.
- The representations made before the Trademark Registry was for the purposes of obtaining registration of the trade mark and can be invoked against IIL only in relation to the said registration and not to deprive them from suing for passing off.
- Contention regarding bonafide adoption can be generally decided only after examination of witnesses, however, as the parties have consented to proceed without examination and considering the facts and circumstances Parijat is deemed to be aware of the prior use by IIL of the mark 'VICTOR' and thus, adoption cannot be said to be honest.
In view of the above the Court decreed the suit permanently restraining Parijat from using the mark 'VICTOR 80' or any other mark deceptively similar to IIL’s mark 'VICTOR'.