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:
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.
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 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.
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