Using identical name may not infringe the TradeMark

When the goods are different, end users are different and the channels of marketing are different it cannot be alleged that the one party using same trade name has infringed the trademark of the other!

In the instant case – Paragon Steels Vs. Paragon Rubbers – justice Nagmohan das of Karnataka High Court has made this point very clear in his judgement. M/s Paragon Rubber Industries had filed an Original Suit against one M/s Paragon Steels(P) Ltd., stating that M/s Paragon Rubber Industries is a registered partnership firm carrying on its business in the manufacture and sale of footwear and allied products under the registered trademark Paragon. They have exclusive rights over the registered trademark Paragon. And therefore they are entitled to protect the mark from misuse by any other person. And the said firm, by spending a huge sum of money popularized the registered trademark Paragon and the same has acquired reputation, goodwill and a distinctive character representing the firm’s products.And which they are using since 1975. In the month of December 2006, it came to their notice that Paragon Steels by adopting the word Paragon which is identical to their registered mark had entered into the market to en-cash the reputation and good will of the trademark. And this act of M/s Paragon Steels amounts to infringement of Trade Mark. It filed an Original Suit[2035/2007] for a decree of permanent injunction restraining M/s Paragon Steels from infringement with M/s Paragon Rubber Industries trademark, particularly the word Paragon to render true accounts, to pay damages and for other reliefs. And M/s Paragon Rubbers had also filed an Interim Application(IA) No.II for grant of temporary injunction restraining M/s Paragon Steels from using their registered trademark Paragon for sale of the products. Particularly steel rods.

M/s Paragon Steels entered appearance before the Trial Court, filed written statement contending that M/s Paragon Rubber Industries are not the owners of trademark Paragon. And they are using the word Paragon for the sale of their product, that is twisted steel rods from the year 1983 and M/s Paragon Rubbers have slept over their rights for all these years and as such they are barred by acquiescence. And further contended that the word Paragon is a dictionary word and they cannot claim exclusive right over the said word. And the M/s Paragon Rubber is using the mark in respect of the footwear and rubber products. On the other hand the Paragon Steels are using the word paragon in respect of steel rods and therefore there is no infringement of trade mark as alleged by the Paragon Rubbers.

The Trial Court held that the trademark of Paragon Rubbers is a well known mark and therefore the Paragon Steels by adopting the same have infringed the trademark. The trial court further held that on account of infringement of trade mark the Paragon Rubbers are put to irreparable loss and injury. Consequently the trial court granted temporary injunction as prayed in I.A.II and restrained the Paragon Steels from using the trademark word ‘Paragon’ till the disposal of the Suit.

Aggreived by the above order of the trial court the Paragon steels approached the Hon’ble High Court in M.F.A.No.11547 of 2008 dt.24/6/2009 for an order to set aside the order of the trial court and for dismissal of the I.A.II.

After hearing both sides and considering the documents produced by both the sides the Hon’ble High Court observed The suit was filed before the trial Court on 12/03/2007. There is no valid registration certificate of the trademark of the M/s Paragon Rubbers as on the date of filing of the suit. The trial Court noticed that the Counsel submitted that the registration of the trademark is renewed and the same will be produced in due process of time. But M/s Paragon Rubbers has not produced any such renewal certificate either before the trial Court or before this Court. The trial court committed mistake in holding that M/s Paragon Rubbers have made out a prima facie case in the absence of any documentary evidence showing they possess valid registration certificate of the trade mark in question as on the date of filing of the suit. Further Section 27 of the Trade Marks Act specifies that no person shall be entitled to institute any proceedings to prevent or to recover damages for the infringement of unregistered trademark. In the event of trade mark being not renewed, when it becomes due in accordance with the provisions of the Act, the person in whose name the trade mark stood registered, cannot claim that he is the registered trade mark owner.

And held that, goods traded and manufactured under the trade name Paragon by M/s Paragon Rubbers is in respect of rubber products, footwear and its allied parts. On the other hand M/s Paragon Steels are trading and manufacturing twisted steel rods. The goods are different, end users are different and the channels of marketing are different.

M/s Paragon Steels must have sold its goods or offered its services in a manner which has deceived or would likely to deceive the public into thinking that M/s Paragon Steels goods or services are of the M/s Paragon Rubbers. The action of passing off depend upon the proof of volume of sales, extent of advertisement, turnover, misrepresentation by M/s Paragon Steels, malafide intention on the part of M/s Paragon Steels, the confusion to the public and the loss suffered by M/s Paragon Rubbers. At this stage there is no prima facie evidence on record to show M/s Paragon Steels are intentionally misrepresenting, public are confused and that M/s Paragon Rubbers have suffered loss. No hardship or loss will be caused to M/s Paragon Rubbers if temporary injunction is refused, but on the other hand M/s Paragon Steels will be put to great hardship and loss if an injunction order is granted. Hence Miscellaneous First Appeal of M/s Paragon Steels was allowed. Impugned order was set aside I.A.No2 dismissed with a direction,The trial court to proceed with the matter in accordance with law and as expeditiously as possible without being influenced by any of the observations made in the impugned order. All contentions are left open.

Dear Readers, I have written the above article based on the above citation to make the Court judgements-readers friendly and to make the common man aware of the myriad Court procedures, the stages and turns each fight takes.

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