The Plaintiff i.e. Aditya Birla Nuvo Limited filed the suit against the Defendants i.e M/s. R.S.Sales Corporation & Anr. for seeking a decree of permanent injunction restraining infringement of its registered trademark, rendition of accounts and delivery up against the Defendants.
The Plaintiff claims to be the subsequent proprietor of the trademark ‘PETER ENGLAND’ registered under registration No.665416 in class 25 and has been selling readymade apparels and accessories bearing the registered trademark PETER ENGLAND since the year 1997. The trademark ‘PETER ENGLAND’ was originally conceived and adopted more than a century ago, in the year 1889 by the Plaintiff’s predecessor, Carrington Viyella Garments Limited (CVGL), England, which underwent a series of corporate adjustments and changes during the course of time and applied for registration of the trademark ‘PETER ENGLAND’ in India vide registration No.665416 in class 25 dated May 12, 1995. The said trademark was assigned to the Plaintiff by an assignment deed dated January 21, 2000 predecessor. The Defendants are engaged in the business of manufacturing and selling footwear under the trademark ‘PETER ENGLAND VIP SHOES’.
Thereafter, the Plaintiff filed applications on September 03, 2001 for registration of the trademarks ELEMENTS PETER ENGLAND (label) and PETER ENGLAND (label) under trademark registration nos. 1041517 and 1041520 in class 25 and were published in the Trade Mark Journal No.1331 (S-1) dated June 15, 2005. Defendant No.1 opposed the said applications on the ground that it was the proprietor of the trademark ‘PETER ENGLAND’ and is using the trademark ‘PETER ENGLAND VIP SHOES’ since 1998. Defendants Contentions
1. The Defendants are the prior user of the trademark ‘PETER ENGLAND VIP SHOES’ since 1998 and have beenusing the said mark ever since.
2. The Defendants turnover of footwear under the said brand during the year 1998-99 was ₹57, 29,791/- which had risen to ₹1, 49,56,350/- in the year 2012-13.
3. That, the Plaintiff had requested for change of the name of the proprietor of the trademark with the trademark authorities, however, the Plaintiff’s name hadnot been substituted as the registered proprietor of the mark yet.
4. That, the Plaintiff had failed to show as to how it was connected with Indian Rayon & Industries Limited and thus, the Plaintiff was not entitled to the benefit of the trademark registered in the name of Indian Rayon & Industries Limited.
5. That, the artistic design of the logo used by the Plaintiff was different from the logo used by Defendant no. 1 and, therefore, no case was made out for violation of Section 28/29 of the Trade Marks Act, 1999.
6. That, the Plaintiff is engaged only in the manufacture and sale of apparels and is not engaged in the manufacture and sale of shoes. Therefore, the Plaintiff has no case for infringement of the trademark and design.
7. That since it was an admitted case that the Plaintiff was not engaged in the manufacture of shoes, the trademark registration granted in favour of the Plaintiff was liable to be cancelled by virtue of Section 47 of the Trade Marks Act, 1999.
1. The registration of the trademark ‘PETER ENGLAND’ was applied for by Indian Rayon & Industries Limited on May 12, 1995 and was subsequently registered in favour of Indian Rayon & Industries Limited, which was the predecessor of the Plaintiff.
2. Plaintiff also relied upon the decision of the Supreme Court in M/s. Gujarat Bottling Company Limited & Ors V. Coca Cola Company & Ors: AIR 1995 SC 2372 in support of their contention that the proprietor of the registered trademark can also sue for infringement of the trademark in respect of the goods covering that mark irrespective of whether the said mark was used or not.
There can hardly be any doubt that that the Defendants have infringed the Plaintiff mark. The registration certificates clearly indicate that the Plaintiff’s mark is also registered for footwear and the Defendant used a plainly similar mark. Hence, prima facie, the Defendants’ use of the trademark is dishonest. There is no credible reason for the Defendant having adopted the mark in question. Further, the Plaintiff filed copies of advertisements published in two daily newspapers in the year 1997 which establish that it had been using the trademark much prior to the use claimed by the Defendants. Further, the Plaintiff is a well known company and it is asserted that its turnover in respect of the goods sold under the trademark ‘PETER ENGLAND’ was ₹570 crores in the year 2012-13. As the Plaintiff has been able to establish all the three basic ingredients, namely a strong prima facie case; balance of convenience; and irreparable loss for grant of an adinterim injunction. On the other hand, the Defendants have failed to disclose any ground for vacating the interim order.
In view of the aforesaid discussion, the application of the Plaintiff is allowed and the interim order is made absolute during the pendency of this suit. Both the applications of the Defendants are rejected.