The parties are at logger heads over use of the brand ‘CYCLE. N. Ranga Rao & Sons Private Limited, the Plaintiff, brought trademark infringement and passing off suit against Sujatha Match Works, the Defendant. The Plaintiff claims that they have been using the “Cycle” trademark for incense sticks/agarbathies since 1981 and have built a strong reputation and goodwill. They allege that Sujatha Match Works, the defendant, has started using a similar “Cycle” trademark for their safety matches, which is causing confusion among consumers and infringing on their trademark rights.

Plaintiff in the suit contends:

1. Trademark Usage: The plaintiff is a registered partnership firm engaged in the business of manufacturing and selling incense sticks since 1948. They have been using the trademark ‘Cycle Brand’ with the device of a cycle since July 3, 1981. This trademark has been in continuous use for over 32 years and has gained significant reputation and goodwill.
2. Trademark Registration: The plaintiff has spent considerable time, money, and effort to familiarize the trademark among traders and consumers. They have obtained registration for the ‘Cycle Brand’ trademark with the device of a cycle in various classes, including Class 34 for safety matches. The registration is valid and subsisting.
3. Defendant’s Infringement: The plaintiff claims that the defendant, Sujatha Match Works, has started using a similar ‘Cycle’ trademark for their matchboxes. This use is alleged to be a violation of the plaintiff’s statutory and common law rights, as it creates confusion among consumers and dilutes the plaintiff’s goodwill.
4. Mala-fide Intent: The plaintiff argues that the defendant’s use of the similar trademark is with a mala-fide intention to damage the plaintiff’s trade and reputation. The plaintiff asserts that the defendant’s actions are likely to create confusion among consumers, leading them to believe that the defendant’s products originate from the plaintiff.
5. Goods are allied and Cognate: The plaintiff argues that use of a similar trademark for ‘matches and match box’, which are cognate goods creates confusion among consumers and amounts to trademark infringement and passing off.

The Defendant in the written statement contends:

1. The defendant has been manufacturing and marketing safety matches under the name and style of ‘Sujatha Match Works’ at Vellore for the last 27 years. They have been using the ‘CYCLE’ label with a device of a cycle since 1995 and have obtained Central Excise approval for it. They argue that their use of the ‘CYCLE’ label is honest and bona fide.
2. The defendant claims to have acquired proprietary rights over the ‘CYCLE’ label for safety matches due to their long-term use. They argue that they are the prior user of the ‘CYCLE’ brand for safety matches, which falls under Class 34, while the plaintiff’s ‘CYCLE’ brand is for incense sticks/agarbathies, which falls under Class 03.
3. The defendant emphasizes that their safety matches and the plaintiff’s incense sticks/agarbathies are different products with different packaging, prices, and uses. They argue that there is no possibility of confusion among consumers as the products are distinct.
4. The defendant contends that the plaintiff cannot claim exclusive rights over the word ‘CYCLE’ for all products. They argue that ‘CYCLE’ is a common English word and its use for safety matches is not in bad faith. Therefore, their use of the ‘CYCLE’ label for safety matches does not cause infringement or passing off.
5. The defendant asserts that they are entitled to claim honest and concurrent use of the ‘CYCLE’ mark for safety matches. They argue that there is no misrepresentation on their part and that the plaintiff has not suffered any injury or loss due to their use of the ‘CYCLE’ label.
6. Geographical Limitation: The defendant undertakes not to manufacture and sell incense sticks/agarbathies under the ‘CYCLE’ label, except for safety matches in specific districts in Tamil Nadu and Andhra Pradesh. They argue that there is no balance of convenience in favor of the plaintiff and that the suit should be dismissed.

Further to completion of pleadings the court framed issues. The plaintiff and defendant examined a witness each to prove their case.

Court’s findings

1. Reputation and Goodwill: The plaintiff’s trademark ‘Cycle Brand’ with the device of a cycle had been in continuous and prolific use for about 70 years. The plaintiff had established a huge reputation and tremendous goodwill among the trade and public.
2. Well-Known Mark: The plaintiff’s mark ‘Cycle’ was declared a well-known mark under Section 2(1)(zg) of the Trade Marks Act by the Registrar of Trade Marks. This recognition further strengthened the plaintiff’s case.
3. Defendant’s Adoption: The court found that the defendant adopted the mark ‘Cycle’ with the device of a cycle without any bona fide reason. The defendant’s reasons for adopting the mark were inconsistent and implausible. The court concluded that the defendant’s adoption of the mark was deliberate and calculated to ride on the enormous reputation and goodwill of the plaintiff. The defendant’s actions were deemed dishonest and mala fide.
4. Allied and Cognate Goods: The court noted that although the plaintiff’s goods (incense sticks) and the defendant’s goods (safety matches) fell under different classes, they were allied and cognate goods. The use of the same mark for these goods was likely to cause confusion among consumers.
5. No Honest and Concurrent Use: The defendant failed to prove that their adoption of the mark was honest. The court emphasized that the defendant’s use of the mark was without due cause and was intended to take unfair advantage of the plaintiff’s well-known mark.

Considering the above findings, the court decreed the suit in the plaintiff’s favour permanently restraining the defendant from using the mark ‘CYCLE’ for incense sticks/agarbathies. The defendant was also ordered to surrender their entire stock of unused offending labels bearing the impugned mark.

Comment

The decision reinforces that the test of similarity of goods is to be looked at from a business and commercial point of view. The nature and composition of the goods, the respective uses of the articles and the trade channels through which they are bought and sold are all important considerations. The Court’s observation on the effect of well-known status of the mark CYCLE is noteworthy. The cCurt opined that the well-known mark transcends the divide of (goods) classifications and therefore, use of the mark for any goods/services is bound to be restrained.