India: Injunction For Use Of "Giani" Granted By The Delhi High Court

Last Updated: 18 May 2011
Article by Sonam Lhamu Bhutia

Giani Gurcharan Singh & Sons (the Plaintiff), a partnership firm engaged in the business of manufacturing and marketing of edible items which included milk and dairy products, ice creams, faluda, milk shakes sued Madhusudhan Singh and Another (the Defendants) for Trademark Infringement and Passing off.

The Plaintiff had come across goods of the defendants being sold under the impugned mark in the beginning of May, 2009 and a legal notice was sent to the Defendants which went unreplied. The Plaintiff alleged that the Defendants in adopting and using the trade name "GIAN'S" in respect of edible items including milk and dairy products, ice creams, faluda, milk shakes had infringed the registered trademark of the Plaintiff and were also passing of their goods and businesses as that of the Plaintiff's, as the mark "GIAN'S" was deceptively similar to the Plaintiff's "GIANI'S" mark, on phonetic, visual and structural grounds. The Plaintiffs further contended that such usage by the Defendants was causing deception and confusion in the market place as members of the public including house wives and people residing in the villages and semi rural areas were being deceived in as much as that they would purchase the defendant's products believing it to have originated from the Plaintiff or that perhaps there was some link between the plaintiff and the defendants.

The defendants were proceeded ex parte.

By way of ex parte evidence, an affidavit was filed by the Plaintiff, which stated that they had adopted the trademark through their predecessors in 1960 and had been using the same since then, as a result of which the goods and services under the trademark "GIANI'S" was automatically associated with the Plaintiff. Further, owing to their standard and quality, their products were in high demand and had come to enjoy enviable goodwill and reputation. It was also stated that the Plaintiff had spent enormous amounts of money on publicity through advertising, trade hoardings, etc.

The Court began by discussing the principles of Trademark Infringement and Passing of and in so doing referred to the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories in which the Supreme Court had stated that if the defendant resorts to colorable use of a registered trade mark such an act would give rise to an action for passing off as well as for infringement. A case of passing of is different from that of Trademark Infringement in that, in the case of the former, if, on account of factors such as packaging, get up and other writings, it is possible for the purchaser to identify the origin of the goods and thereby distinguish the products of the defendant from those of the Plaintiff, the defendant may not be held liable whereas in the case of the latter, he would be liable in spite of origin and distinction being proved.

The High Court stressed that the Courts have to curb any attempt by a person to enrich upon the goodwill generated by any other person in any event of being approached by the aggrieved party. It was noted by the Court, that while deciding the question of similarity of two marks, the point of view of a man with average intelligence and imperfect recollection should be considered (Corn Products Refining Co. v. Shangrila Food Products Ltd.) also, the broad and essential features of the two marks in question are to be considered. It would be enough if the impugned mark bears an overall similarity to the registered mark such that it would be likely to mislead a person usually dealing with one to accept the other if offered to him (Parle Products (P) Ltd. v. J.P. & Co, Mysore). Further, the question of whether a trade name is likely to deceive or cause confusion by its resemblance to another mark already registered is a matter of first impression (Amritdhara Pharmacy v Satyadeo Gupta).

Applying all the above principles, the Court found that the defendant's mark "GIAN'S" was similar to the Plaintiff's "GIANI'S", visually, structurally and phonetically such that there is likelihood of deception being practiced on the consumer. The Court therefore inferred that the defendant's intention was to encash on the reputation and goodwill enjoyed by the Plaintiff in the ice-cream market. Based on this, the Court granted an injunction in favour of the Plaintiff, thereby restraining the Defendant from using the Trademark or any other mark similar to the registered mark of the Plaintiff in the course of its trade.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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