At the ex parte ad-interim stage of Goldmedal PLY AND BOARDS injunction, the Delhi High Court has held that Goldmedal’s prior use and prima facie reputation warranted protection against identical marks used for plywood and allied goods, notwithstanding registrations primarily covering electrical goods. Despite Goldmedal’s registrations primarily covering electrical goods, the Court prima facie found that the defendants’ use sought to exploit its reputation and suggest a false association.
The Court found that Goldmedal had established continuous use of its marks for electrical goods through its predecessor since 1979, together with goodwill and reputation. The defendants’ marks wholly incorporated “GOLDMEDAL” in an identical lettering style, merely adding “PLY AND BOARDS”. The Court prima facie viewed this as an attempt to ride on Goldmedal’s reputation and suggest a non-existent association.
Emphasising on Goldmedal PLY AND BOARDS injunction, the Court recognised that the registrations primarily concerned electrical goods, while the defendants dealt in plywood and allied goods. Nevertheless, it prima facie found that use of the identical marks without due cause was likely to take unfair advantage of, and harm, Goldmedal’s distinctive character and reputation. The Court’s protection rested on its position as prior user, adopter and registered proprietor of its marks.
Briefly, Goldmedal Electricals Pvt. Ltd. filed a suit against Jimmy Thoppilan and others seeking protection against trademark and copyright infringement and passing off. The plaintiff claimed use of “GOLDMEDAL” through its predecessor since 1979 for electrical goods and stated that it had also expanded into plywood and allied products.
It alleged that the defendants were selling plywood, boards and related goods under “GOLDMEDAL PLY AND BOARDS”, using the same lettering style and artistic presentation as its marks. The plaintiff’s Class 19 word-mark application had been refused, with a review petition filed against that refusal; oppositions to its separate Class 19 device-mark application had been withdrawn.
A Single Judge Bench of Justice Tejas Karia found that Goldmedal had established long and continuous use of its marks for electrical goods since 1979, along with goodwill and reputation. It observed, prima facie, that the defendants had wholly incorporated “GOLDMEDAL” in an identical lettering style, merely adding the descriptive words “PLY AND BOARDS”.
Emphasising on Goldmedal PLY AND BOARDS injunction, the Court considered this an apparently dishonest attempt to benefit from Goldmedal’s reputation and suggest an association where none existed. Such use was likely to confuse consumers, erode consumer trust and dilute the plaintiff’s goodwill. The balance of convenience favoured Goldmedal, which would suffer irreparable injury without interim protection.
The prima facie basis for interim protection was that Goldmedal’s marks had acquired a reputation in India and the defendants’ use of identical marks, without due cause, was likely to take unfair advantage of, and harm, their distinctive character and reputation, even though the plaintiff’s registrations primarily concerned electrical goods and the defendants dealt in plywood and allied goods, found the Court.
