On September 4th, 2009,
the Additional District Judge, Jaipur passed a temporary injunction
order in favour of Bairathi Shoes Company Private Limited (the
Plaintiff originally and the Respondent in the present suit),
restraining, Khannan Polymers (Defendant- Appellant) from using the
trade mark 'BERATI' with respect to manufacture, sale and
export of shoes, foot- wears, etc. or through his agent or servant
until the suit is finally adjudicated.
Aggrieved by the above mentioned order, Khannan appealed before
the High Court of Rajasthan.
Bairathi Shoes, a registered company
involved in the manufacture and sale of foot- wears under the name
and style of the trade mark "BAIRATHI" had been
established since 1980 and the said mark had been duly registered
as per the provisions of the Trademark Act, 1999. They, on becoming
aware that Khannan had applied to get the mark "BERATI"
with respect to manufacture and sale of foot- wears, registered,
felt that Khannan was trying to take advantage of their goodwill by
using a mark deceptively and phonetically similar to their own
Khannan contended that the Learned
Trial Court had proceeded erroneously in only focusing on the
phonetic and deceptive similarities between the two marks while not
taking the dis- similarities in both into consideration. As such
they stated that the impugned order could not be regarded as a good
order in the eye of law and should therefore be set aside.
The learned counsel for Bairathi
defended the impugned order and called it just and proper. He
referred to the case of "Heinz Italia & Anr.v. Dabur
India Ltd." which dealt with the similar marks
"Glucon- D" and "Glucose- D".
In this case the Supreme Court had held that in an action for
passing off, an injunction can be secured if the Plaintiff can
establish prior use and the registration of a mark or a similar
mark in point of time is irrelevant. The Apex Court further held
that the principle of similarity should not be applied rigidly and
if dishonest intention on the part of the defendant in passing off
goods can be prima facie established then an injunction should
ordinarily follow. It was further held that in the case of a
passing off action, the test of phonetic similarity should not be
ignored and courts should take note of similarities rather than
dissimilarities. The court said that the test was whether a
particular mark has obtained acceptability in the market so as to
confuse a buyer as to the nature of product he was purchasing.
The Court observed that Khannan had
been mesmerized by the name of foot- wears being manufactured in
the name of "BAIRATHI" and had therefore with dishonest
intention registered the mark "BERATI" to use the
goodwill of the Respondents. Further, the Trial Court had found
that "BERATI" was phonetically and deceptively similar to
"BAIRATHI". The Court thus found the order of the lower
court just and proper and the appeal was dismissed.
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