Should a prior used mark though used intermittently be given higher threshold and protection than registered mark? The two companies in mattress trade are loggerheads over use of the mark NO TURN. The Plaintiff, Peps Industries Private Limited (Peps) filed the suit alleging trademark infringement and passing off to restrain the Defendant, Kurlon Limited (Kurlon) from using the mark NO TURN in relation to mattresses and other products. The Court at the admission stage noting that Peps had made out primafacie case granted ad interim injunction restraining Kurlon from using the mark ‘NO TURN’ or any other deceptively similar mark.

Kurlon on being served has filed an application for setting aside the interim injunction. The post discusses arguments/contentions of the parties and ruling of the court.

Contentions of the parties:

Peps contended

1. they are the registered proprietor of the mark ‘NO TURN’ and have been using the mark continuously since January, 2008 in relation to mattresses and other related products
2. the mark NO TURN was registered in Feb 2011 though the application was filed by them in March, 2008 on proposed to be used basis.
3. Kurlon in the year 2018 dishonestly adopted the trademark ‘NO TURN’ and a cease and desist notice was sent on 7^th August, 2018.
4. Kurlon while responding to said letter claimed prior use of trademark ‘NO TURN’ since October, 2007 and subsequently filed an application on December, 2018 for registration of the trademark ‘NO TURN’ claiming use from 2007. along with an application for rectification/removal of the plaintiff’s registered mark ‘NO TURN.
5. the defence of prior use by Kurlon is an afterthought as the purchase orders and invoices placed on record are ex facie fabricated just to claim prior use.
6. The use of the mark ‘NO TURN’ is intermittent and not been used continuously commercially.
7. The mark ‘NO TURN’ is used for identical goods i.e. mattresses, therefore there is a clear likelihood of confusion amongst the customers.

Kurlon contended

1. They are prior user of the mark ‘NO TURN’ since the year 2007 even which is prior to the filing date of the application of the Peps (March, 2008) and was filed on intention to use.
2. They use the mark ‘NO TURN’ along with its brand KURLON which is a reputed brand in mattresses and hence there can be no confusion.

Issues for determination before court

1. Whether Kurlon is a prior user of the mark ‘NO TURN’ and entitled to protection?
2. Whether use of mark ‘NO TURN’ by Kurlon being descriptive no injunction can be granted in favour of the plaintiff?

Court’s Ruling

Whether Kurlon (defendant) is a prior user of the mark ‘NO TURN’ and entitled to protection?

• To show prior use and avail benefit of section 34 the other party has to show ‘commercial continuous use’ i.e., continuous, distinct from a use which is stray, isolated or disjointed in relation to same goods or services. The court concluded on perusing the brochure of the Kurlon and invoices filed by them that that the sales are intermittent in the various years and do not indicate a continuous and voluminous use;
• Mere issuance of an advertisement would not constitute user of the mark;
• Brochures filed by Kurlon did not contain any mattress with ‘NO TURN’ brand, however other brands were evident;
• The prior use by Kurlon of the mark ‘NO TURN’ since year 2007 is only of the label and not the trademark ‘NO TURN’ on mattress.

Whether manner of use of mark ‘NO TURN’ by Kurlon being descriptive, no injunction can be granted in favour of the plaintiff?

• The manner in which Defendant has used the mark ‘No Turn’ on the mattresses has come out not as a trademark/brand but as a description of quality of the mattress i.e., mattresses which do not require to be turned around and thus labelled as ‘No Turn’.
• Court while reiterating the legal proposition ‘that for the purpose of passing off any interim order in infringement actions the court is entitled to consider the evidence of distinctiveness till the date of registration and post registration noted that – for the reason that the mark ‘NO TURN’ being descriptive and Plaintiff failed to show any material showing that on the date of application or even on its date of registration, the mark ‘NO TURN’ had acquired distinctiveness to achieve status of a well known mark.

In light of the above court dismissed application for interim injunction by Peps seeking to restraint Kurlon from using the mark ‘NO TURN’ and holding it to be descriptive mark. Thus earlier injunction order was set aside.  

Comment

It is interesting to note that court at the interim injunction stage chose to give a finding that Kurlon had not used the mark continuously going into details of the invoices filed and meticulously examining them. Should this have been done at the trial stage? Further, it is not clear whether the court’s finding on descriptiveness took into account the trademark application filed by Kurlon for registration thus discounting their claim that NO TURN is being used descriptively and not as a trademark.