India: Assessing Whether Two Sets Of Goods Of Rival Parties Trading Under An Identical Mark Are Allied Or Related To Be Scrutinized More Closely, Than Earlier- High Court Of Calcutta

Last Updated: 17 August 2011
Article by Sonam Lhamu Bhutia

Jayanta Lamp Industries Private Limited v Orient paper and Industries Limited, was a suit of alleged passing off by Orient Paper and Industries Limited (Defendant) of "ORIENT" electric lamps as those of Jayanta Lamp Industries Private Limited (Plaintiff).

Jayanta Lamp, is involved in manufacturing and marketing lamps of various kinds under the word mark "ORIENT", while Orient Paper is engaged, inter alia in the manufacture and marketing of ceiling and other kinds of fans and is the proprietor of the trade mark in the word "ORIENT" in respect of fans. Jayanta lamp alleged that CFL and fluorescent tube lights marketed by the Orient paper under the word mark "Orient", was a slavish imitation of their well known mark. This was countered by Orient Paper stating that Jayanta Lamps were not justified in adopting the word mark "ORIENT" and further that it was in fact Jayanta Lamps who were bent upon taking advantage of the goodwill and reputation of Orient Paper built around the mark "ORIENT"

Orient Paper based their arguments on the following two lines:

  1. Since lamps of all descriptions would be covered by class 11 of the list of classifications and since Jayanta Lamp's word mark "ORIENT" was registered in respect of, inter alia , electric bulbs since 1994, its foray into the manufacture of CFL and other lamps was a logical extension of its business continued for decades.
  2. That they had an admitted prior registration in class 11 covering electric bulbs, therefore they were entitled to the exclusive use of the mark "ORIENT" in relation to the technological advancement on electric bulbs reflected in CFL and fluorescent tube lights.

Jayanta Lamps, on its part relied on the case of Vishnudas Trading v Vazir Sultan Tobacco Co. Ltd, where the Supreme Court had held that the classes mentioned in the fourth schedule to the Rules framed under the Trade and Merchandise Marks Act, 1958 may consist of goods or articles which could be separately identified and all goods bunched in a class were not goods of the same description as commonly understood in the trade.

In its reply, Orient Paper relied heavily on Harish Motichand Sariya v. Ajanta India Ltd, (beside other cases), where an interlocutory injunction in a passing- off action was granted in favour of the owner of the "Ajanta" mark in respect of toothbrushes against the use of the same mark by the Defendant in respect of toothpaste. Orient Paper further argued that if the class of customers and the trading channel of the two goods are the same, the use of a mark in connection with one would amount to the use thereof in respect of the other.

The High Court of Calcutta, began by noting that in today's competitive market, where the degree of specialization of products is much more pronounced than earlier, the assessment as to whether the two sets of goods of the rival parties trading under an identical mark are allied or related, requires a closer scrutiny than applied by Courts earlier. The Court further noted that the mere fact that electric lamps and electric fans could be used in the same breath does not imply that the use of a mark in relation to either would cast any umbra of proprietorship in respect to the other. The test, therefore today, is, as to whether in view of the Plaintiff's use of the mark in relation to electric lamps for a considerable period, the Plaintiff is entitled to stop the Defendant from entering the electric lamps market, since such entry of the Defendant is of recent vintage.

It was further stated that Jayanta Lamp's prior use was prima facie established on affidavit evidence. Although the defendant had been able to discredit an assertion found in the plaintiffs affidavit in reply that it sold lamps only under "Orient" mark, that would still not detract from Jayanta Lamp's right as prior user of the mark and assert their exclusivity over the mark.

Thus, on a prima facie assessment of the material in support, the Court held that Jayanta Lamp appeared to be entitled to the interlocutory injunction that it sought. Accordingly, Orient Paper was restrained from using the mark "ORIENT" or any colourable imitation thereof in respect of electric lamps pending disposal of the suit.

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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