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.
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