An infringing use of a registered trademark involves use of such trademark by another as a trade name or name of his business concern or a part of trade name, or business concern dealing in goods and services in respect of which the trademark is registered.1 Such use would not only impinge upon the business and profits of the registered owner of the trademark, but also take unfair advantage or be detrimental to the distinctive character of the mark. The instant Delhi High Court case is a good illustration in point.2
The plaintiffs were the registered owners of the trademark GAP, Old Navy and Banana Republic in respect of apparels sold through their retail stores. They alleged parallel importation of the surplus goods manufactured by them under the above trademarks but no longer in vogue and intended for sale in a specific country. The defendants were importing these goods and selling them at a lower price. They were also selling similar garments under labels of GAPL which was the abbreviated form of the name of their store 'Garments and Accessories Price Less'.
The plaintiffs contented that the selling of garments bearing the label of GAP and those bearing the label of GAPL from the same shop would be detrimental to the distinctive character of the mark and cause confusion in the minds of the purchasing public. Accordingly, the plaintiffs filed an application for interim injunction which was granted by the court on the grounds of counterfeiting of obsolete goods of the plaintiff. The defendants however, were able to prove that they procured the obsolete goods from a proper channel being a store in Dubai which was purchasing them from the plaintiffs themselves. The court hence vacated the interim orders because no claim of counterfeiting was made out. The court said "there is little doubt that the defendant had properly sourced the goods by reason of the plaintiffs having put the goods in the channel of sale and no grievance in that behalf can be made by the plaintiffs." Again, the defendants sold the obsolete merchandise of the plaintiff at a discounted price with the original retail price label intact together with the name of the importer and the year of import. They were being sold even in the bags and hangers supplied by the plaintiffs.
Another line of defendant's business was sale of self manufactured apparels under the trademark GAPL and GAPPLE. The defendants prayed for infringement and passing off action as this was damaging the sales and distinctive character of their mark in abject violation of Section 29(5) of the Trademarks Act 1999. In both cases it was required that, the relevant class of persons actually perceived the product designated exclusively by the mark allegedly infringed, as originating from a given undertaking. The infringing mark must be used in the course of trade, i.e, in a regular trade wherein the proprietor of the mark is engaged.
It was decided that though GAPPLE contains the words GAP; in terms of words and phonetics the effect becomes different and the consumer would not be deceived into believing them as originating from the same source. If the writing style and the color combination is different, it can be safely used by the defendant. However, the position is different with regard to the use of trademark GAPL. Acccordingly, the mark GAPL as an abbreviation was denied use and all boards in that behalf asked to be removed because of the probability of confusion in the minds of consumers; though the complete name 'Garments and Accessories Priceless' could be used in marketing.
If the goods are being sold under the trademark GAPPLE and are plain T-Shirts, they cannot be seized. However, if the goods bearing the said numbers have GAP written over them, the same were to be resealed and kept in custody.
The case brings up two aspects. One is the counterfeiting of goods through the channels of import for obsolete and out of fashion products, which may have the potential of infringing another's trademark. The court examined in detail the channels of sale of the plaintiff and the channels of procurement of the defendants to arrive at the conclusion that the defendants were selling discarded or out of fashion goods of the plaintiff with the original labels intact. Another important aspect is the use of similar abbreviations as trade names by two manufacturers. The taking of any essential feature of the mark or taking the whole of the mark and then making a few additions and alterations constitutes infringement. The goodwill of GAP in course of trade was encroached upon. The court appropriately settled the rights of the two parties by restraining the use of abbreviation GAPL by defendants as trademark while allowing the word GAPPLE to be printed on t-shirts manufactured by them.
1 Section 29(5) of the Trademarks Act 1999
2Old Navy (ITM) Inc. & Ors. v. Deepa Surekha & Others 2008 (37) PTC 197 (Del)
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