India: Recounting Passing Off In The “SUPERBRIGHT” Verdict

Last Updated: 1 October 2008

The common law offence of passing off has occupied a prominent place in trade mark litigation. Alleging S.B. Equipments of a passing off offence, Atul Rawal filed a suit and moved to seek an ad interim injunction to restrain S.B. Enterprises from manufacturing, selling, marketing, advertising or in any manner whatsoever from using an assortment of deceptively or confusingly similar trademarks containing "SUPER BRIGHT" accompanied by various suffixes. They claimed to be proprietor of the marks and stated that they had developed several unique and novel detergent products solely on the basis of its own research and development. They stated that all such products were being marketed and sold under the impugned assortment of trademarks. Averring of the family settlement vide which Rawal had acquired the mark, they stated that the mark was first put to use in 1978.

Documents to show the supply of detergents to hotels and hospital from the 1990s to date were also placed on record. They also stated that in the year 2001, they applied for and initiated talks for supply of their detergents to the Armed forces for use in various Army hospitals all over the country. Rawal averred that special formulations had been created for the purpose and that the same had been approved for use by Army Hospitals. They stated that S.B. Enterprises' failure to respond to the legal notice asking them to restraining themselves from passing off its goods, initiated the litigation.

The Court noted that the case at hand raised interesting questions relation to passing off. S.B. Enterprises averred that from time to time, the Army had invited tenders in respect of various kinds of "SUPER BRIGHT" detergents. They submitted that their bids for the said detergents on the understanding that "SUPER BRIGHT" was only used a description along with suffixes so as to identify the products according to the specifications given in the tender invitations. They contended that the same was never regarded as a brand name or a trademark, and that they did not supply or sell any of their products in the open market under the contentious marks. They stated that the only supplies made by them were to the Army on the basis of tenders invited.

The Court noted that the interesting question for deliberation was "whether in such circumstances, where a single consumer invited tenders for a particular product using the mark 'SUPER BRIGHT' along with its suffixes and several persons submit their bids for the same products, do such persons intend to pass off their products as those of others?"

Finding prima facie evidence that Rawal had been using the mark "SUPER BRIGHT" along with various suffixes in respect of its detergent products since 1990, the Court observed that S.B. Enterprises did not market its products under the impugned mark. Noting that the Army invited tenders using the words "SUPER BRIGHT" and various persons, including the parties to the suit, responded to those tenders the Court found that the Army was awarding the tenders mostly to Rawal and lately in larger shares to the S.B. Enterprises. In such a scenario, the Court stated that whether S.B. Enterprises was intending to and, in fact, passing off its products was a debatable question and that the same could not be decided at the interlocutory stage without examining the evidence that may be led by the parties.

Stating in the course of arguments that Rawal was aware of S.B. Enterprises' bid, they handed to the Court a detailed tabulation of all such bids and grant of tender. The counsel for S.B. Enterprises stated that the trend elucidated therein reflected that initially all orders were being placed on Rawal and all supplies were being made by them. However, subsequently, S.B. Enterprises got a foothold and part orders were placed on them, while in 2007, they virtually edged out Rawal insofar as the Army tenders are concerned. They stated this to be s the reason why Rawal did not approach the Court prior to 2007.

The Court opined that from the assertions made, it could not be stated that Rawal was not aware of the fact that when tenders were invited by the Army for products under the name of "SUPER BRIGHT" and that there were other parties, including S.B. Enterprises, who were submitting their bids and that at times the tenders were not being awarded in part or in whole to Rawal. The Court stated that the fact that the plaintiff had not approached this court immediately but waited for a considerable length of time, disentitled them to an interim injunction and they would have to wait for a final decision in the suit. However, they stated that the fact that S.B. Enterprises was suppliers only to the Army in response to its tender for "SUPER BRIGHT" and that they did not market or sell any detergents in the market to any other consumer under the mark "SUPER BRIGHT". The Court stated that they would have to abide by this undertaking and assurance till the disposal of the suit. The Court disposed off the application stating that the non-grant of an injunction to the Rawal qua supplies being made to the Army by S.B. Enterprises would not, in any way, prejudice their case in respect of any other customers or the public at large and would not create any special equities in favour of the S.B. Enterprises qua the proprietorship of the mark "SUPER BRIGHT".

© Lex Orbis 2008

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