In cases of trade mark infringement and passing off where adoption is found to be dishonest, delay pales into insignificance, remarked the Bombay High Court while pointing out that the mark “Siyaram” has no descriptive nexus with textiles and has acquired distinctiveness through decades of use.
Significantly, the Court rejected the contention that Defendants cannot be injuncted from using “Siyaram” since it is the name of a Hindu God, calling it entirely misplaced, and held that there is no provision in the Trade Marks Act, 1999, prohibiting registration or enforcement of marks comprising names of the Hindu Gods or Deities.
Since Section 9 of the Trade Marks Act, 1999, bars marks that are devoid of distinctiveness, the Court stated that the mark “Siyaram” has no descriptive nexus with textiles and has acquired distinctiveness through decades of use.
The High Court, therefore, ruled that the Defendants’ (Stanford Siyaram Fashion Private Limited) adoption of “Siyaram” was prima facie dishonest and done with full knowledge of the Plaintiff’s (Siyaram Silk Mills Limited) prior use and reputation. The Court pointed out that the Defendants’ predecessor was aware of and sold the Plaintiff’s products. Hence, when adoption is dishonest, questions of delay or minor differences become insignificant, and an injunction should follow.
A Single Judge Bench of Justice Arif S. Doctor found the Defendants’ claim of prior use to be legally untenable, and observed that reliance on use by a predecessor is only permissible with clear evidence of a valid assignment of the trademark and its associated goodwill, which was absent in this case. The Defendants’ own claim of use dates back only to 1992, which is subsequent to the Plaintiff’s adoption and registration of the mark. Therefore, the Defendants could, at best, claim use only from their incorporation in 2006.
The Bench rejected the Defendants’ argument that the Plaintiff failed to establish goodwill. It held that the Plaintiff had amply demonstrated goodwill at the interlocutory stage through long-standing use, statutory registrations, substantial sales figures, and promotional expenditure certified by a chartered accountant. The Bench also noted that the evidentiary standards for a prima facie case at the interlocutory stage are different from those required at a final trial.
The Defendants’ reliance on Section 28(3) of the Trade Marks Act, 1999 (which relates to rights of different registered proprietors) was deemed misplaced, remarked the Bench, while clarifying that the Defendants hold a registration for a composite label (“Apricott – a Product of Stanford Siyaram Fashions Pvt Ltd”), not the word mark “SIYARAM” itself. Under Section 17 of the 1999 Act, registration of a composite mark does not confer exclusive rights over its individual components.
The Bench thus concluded that the Plaintiff had successfully established a strong prima facie case for the grant of interim relief. The balance of convenience was found to be clearly in favour of the Plaintiff, as the Defendants’ continued use of the impugned mark would dilute the Plaintiff’s established mark and cause irreparable injury to its goodwill and reputation.
Briefly, the Plaintiff, Siyaram Silk Mills Limited, was incorporated in 1978, but its promoters had been using the trademark “Siyaram” in the textile trade since 1977, and holds several registrations for the “Siyaram” mark, with the earliest dating back to 1984 for the word mark. The Plaintiff has established immense goodwill and reputation through extensive sales and promotion under this mark. In June 2007, the Plaintiff discovered that Defendant No. 1 was incorporated under the name “Stanford Siyaram Fashion Private Limited” and was using the mark “Apricott – a Product of Stanford Siyaram Fashions Pvt Ltd” for textiles. The Plaintiff sent a cease-and-desist notice, which the Defendants claim not to have received.
The Plaintiff, therefore, filed a suit to restrain the Defendants from infringing its registered trademark “Siyaram” and from passing off their business and products as those of the Plaintiff. Opposing this, the Defendants claimed prior use since 1992 through the father of Defendant Nos. 2 and 3, who allegedly ran a business named “Siyaram Fashion Store”. They also argued that “Siyaram” is the name of a Hindu God and cannot be monopolised.
Appearances:
Advocates Rashmin Khandekar, Minesh Andharia, Anand Mohan, and Jay Shah, for the Plaintiff
Advocates Sandeep Parikh, Vighnesh Kamat, Hemang Engineer, Chetana Gaikwad, for the Defendants
