Bombay HC Affirms Prior Use Doctrine Over Registration, Grants Interim Relief Against Fraudulent Trademark Registration and Unlawful Use of Deceptively Similar Mark ‘ROOKIE’

The Bombay High Court allowed the plaintiffs’ interim application, restraining defendants from using the trademark “ROOKIE” or variants including “ROOKIE USA,” affirming the prior rights of the plaintiffs over the “ROOKIES” trademark.

The defendants include The Haddad Apparel Group Ltd., registered in New York, along with Indian companies and a director acting as franchisees. The plaintiffs received cease and desist notices following the defendants’ announcement of opening stores under “ROOKIE USA” in India since 2019. Despite negotiation attempts for coexistence, no settlement was reached.

The plaintiffs filed suit for trademark infringement and passing off concerning their registered trademark “ROOKIES” and associated marks under Class 25 and Class 35 of the Trade Marks Act. Plaintiff No. 1 adopted “ROOKIES” as a trademark since 2008 and holds registrations in India and various neighbouring countries.

Plaintiffs emphasized prior continuous use of “ROOKIES” in India since 2008, substantial goodwill, celebrity endorsements, and presence both offline and online.

Defendants claimed earlier global registration of “ROOKIE” since 2011, argued non-similarity of goods/services due to classification differences (Class 18 and Class 35 vs. Class 25), and alleged acquiescence by plaintiffs due to delayed suit filing.

The Bench comprising Justice Sharmila U. Deshmukh held that despite registration in different classes under Sections 29(1) and 29(2) of the Trade Marks Act., goods and services of the parties are allied and targeted at the same consumer base.

The trademark registration by defendants was found prima facie fraudulent, with the “USA” suffix removed in Indian registration, and use focused on “ROOKIE,” causing deceptive similarity. It was observed that the defendants’ mark was not put to bona fide use in India until 2019, indicating abandonment. The Court invoked the Lupin principles[1] to entertain the plaintiffs’ interim application and restrain the defendants from using the mark pending final adjudication.

The Court also applied the doctrine of prosecution history estoppel against the defendants because they had already represented in earlier proceedings at Hong Kong that their mark was not similar to the plaintiffs’ mark, effectively allowing them to use it, and now attempted to reverse that stance to defend their use in India.

In result, the Court granted interim injunction restraining the defendants and their affiliates from manufacturing, selling, distributing, or marketing goods under trademarks containing “ROOKIE” or deceptively similar marks to “ROOKIES” in Classes 25 and 35, covering clothing and retail services.

The defendants were further directed to transfer or disable the domain “rookieindia.com” to prevent confusion. A stay on this order was granted for six weeks from upload date.

Cases referred to:

1. Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672
2. Allied Auto Accessories Ltd. vs. Allied Motors Pvt. Ltd., 2002 SCC OnLine Bom 1138
3. Corn Products Refining Co., vs. Shangrila Food Products Ltd., AIR 1960 SC 142
4. Balkrishna Hatcheries Vs Nandos International Ltd., 2007 SCC OnLine Bom 4
5. British Sugar Plc v. James Robertson & Sons Ltd., 1996 R.P.C. 281
6. Indchemie Health Specialities (P) Ltd. vs Intas Pharmaceuticals Ltd., 2017 SCC OnLine Bom 10127
7. Assam Roofing Ltd. v. JSB Cement LLP, 2015 SCC OnLine Cal 6581
8. Lupin Ltd. vs Johnson and Johnson, AIR 2015 Bom 50
9. Midas Hygine Industries v. Sudhir Bhatia, 2004 3 SCC 90
10. Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co., AIR 1990 Delhi 19
11. Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727
12. Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., AIR 2004 SC 354
13. American Home Products Corporation v. Mac Laboratories Pvt. Ltd., 1986 (1) SCC 465
14. & T. Harris (Calne) Ld. v. F. S. E. Harris, [1934] 51 R.P.C. 98
15. Zippo Trade Mark, [1999] R.P.C. 173
16. Williams’ Ld vs Massey Ld, [1911] 28 R.P.C. 512

Cases distinguished:

1. In the matter of an application by Ladislas Jellinek for the registration of a Trade Mark, [1946] R.P.C. 59
2. Raleigh International Trade Mark, [2001] R.P.C. 11
3. Harding v. Smilecare Limited, [2002] F.S.R. 37
4. M/s Parry and Co v. M/s Perry & Co., AIR 1963 Mad 460

[1] Lupin Ltd. vs Johnson and Johnson, AIR 2015 Bom 50

For the Plaintiff: Mr. Virag Tulzapurkar, Senior Advocate along with Mr.Hiren Kamod, Mr. Mahesh Mahadgut, Mr. Shildendra Thathe, Mr.Kaivalya Shetye, Ms. Neha Joglekar and Mr. Prem Khullar, Advocates.

For the Respondent: Dr. Veerendra Tulzapurkar, Senior Advocate along with Ms.Hemlata Marathe and Mr. Vaibhav Khanna i/by Jehangir Gulabbhai and Bilimoria and Davawala, Advocates.