Bombay High Court restrains husband and wife from using RPG mark for Optical and Pharmacy business
Two entities using an identical mark ‘RPG’ an acronym of their names vie for rights before the Bombay High Court. Plaintiff, RPG Enterprises Limited (RPGL), filed the suit against the Defendants, Riju Ghoshal and Ors (Riju), alleging trademark and copyright infringement and passing off. The post covers the arguments of the party concerning a preliminary injunction ruling by the court.
Plaintiff RPGL, in support of its case, stated:
- They are a multi-industry Indian conglomerate consisting of over fifteen companies across core sectors of the economy. In 1979 they honestly adopted the distinctive and unique trademark RPG , which is an acronym derived from the initials of its founder, Mr. Rama Prasad Goenka, a known industrialist.
- Over the years, RPG and its group companies have adopted various stylized/formative trademarks incorporating the mark RPG in respect of their different products and services. They have registrations for several RPG/RPG formative marks in multiple classes and secured copyright registration regarding the artistic work in its RPG Logo.
- They own domain names, incorporate the trademark RPG, and are active on popular social media websites such as Facebook, YouTube, Twitter, and LinkedIn.
- The RPG/RPG marks have acquired distinctiveness owing to the continuous, extensive, and uninterrupted use and promotion of the said trademarks in India and abroad.
- In October 2017, they became aware of the trademark application in Class 35 in the name of “Riju Ghoshal trading as RPG Opticals,” which was opposed, and the proceedings are pending. After that, they learned about the trademark registration in Class 44 in the name of “Poulami Ghoshal trading as RPG Pharmacy,” who is the 2nd Defendant against their mark a rectification is pending.
- Further inquiries revealed that the Defendants are a married couple jointly operating ‘RPG Pharmacy’ and ‘RPG Opticals’. They have also registered the domain names www.rpgpharmacy.com and www.rpgopticals.com, incorporating the mark RPG.
- ‘RPG Opticals’ and ‘RPG Pharmacy’ are deceptively similar to the prior registered and used RPG Marks. The distinctive element in the Defendants’ marks, namely- ‘RPG Opticals’/’Perfect Look. Perfect Vision’ and ‘RPG Pharmacy’/’Your health is our world’ are RPG, and the other elements are descriptive of the concerned services covered thereunder and non-distinctive.
- Defendants’ services of optical products rendered under the mark/name ‘RPG Opticals’ and pharmacy and dispensary services rendered under the mark/name ‘RPG Pharmacy’ are cognate and related to the goods and services in respect of which the Plaintiff uses the prior adopted, registered and famous RPG Marks.
- Defendants’ adoption and use of the impugned marks, which is identical to the prior used RPG marks having goodwill and reputation, amount to passing off.
Defendants, Riju, countered with the following:
- The Defendants, Riju, and Poulami Ghosal, are husband-wife and sole proprietors of ‘RPG Opticals’ and ‘RPG Pharmacy’ respectively, and their operations are confined to Kolkata.
- Their marks contain the words’ Opticals’ and ‘Pharmacy’ and include the taglines “Perfect Look Perfect Vision” and “Your Health is our World,” respectively, differentiating them from Plaintiff’s mark/name.
- They are using the ‘RPG Opticals’ for advertisement, wholesale and retail of Optical lenses, and ‘RPG Pharmacy’ for pharmacy and dispensary services, unlike the Plaintiff, who manufactures goods under the RPG marks. Thus, there is no common field of activity.
- Adoption of the mark/name ‘RPG Opticals’ and ‘RPG Pharmacy’ is honest as RPG comes from the first letter of Riju and Poulami and first letter of the surname Ghoshal. They are using the marks’ RPG Opticals’ and ‘RPG Pharmacy’ only as a trading name and not selling goods under the mark RPG.
- The domain names www.rpgpharmacy.com and www.rpgopticals.com are only used to provide information concerning their establishments, and they do not provide any service through such domain names. Thus, no infringement is made out.
- RPGL adopted the mark RPG in 1979. RPGL has filed documentary evidence to substantiate the extensive use, promotion, and diverse business operations and the prior use of the trademark RPG across several verticals. The goodwill and reputation of the mark are not limited to a particular category or business segment. Thus, the RPG mark deserves protection as a well-known trademark.
- RPG is the prominent element in the Defendants trademark/names and . The terms’ Opticals’ and ‘Pharmacy’ and the taglines are descriptive of the services provided and not distinctive or dissimilar to the Plaintiff’s RPG marks. Moreover, documents show that Defendants are using the mark RPG in a standalone manner as well. Thus, the argument that the rival marks are different does not hold good.
- The contention that Defendants are using the mark RPG only as part of their trade name is not factually correct and ought to fail. The fact that they have applied for registration of the mark in class 35 which is opposed, and the registration in class 44 against which the Plaintiff has filed a rectification will go to show that Defendants use the mark in relation to their services as well.
- Plaintiff has registration for the RPG marks, logo and formative marks in class 5 for pharmaceutical preparations and is engaged in the manufacturing and selling such products. The Defendants are operating a pharmacy shop to sell medicines/pharmaceutical preparations that overlap with the Plaintiff’s business as both the business activities relate to the same field, i.e., the medical field. Further, Plaintiff owns a registration for its RPG Logo in class 09. The optical and related goods fall, and the Defendants’ activities under the mark ‘RPG Opticals’ overlap with the Plaintiff’s business interests. Therefore, the use of the mark ‘RPG Opticals’ and ‘RPG Pharmacy’ by the Defendants amount to infringement of the Plaintiff’s well-known registered RPG marks.
- Even if it is considered that the goods and services offered by the Plaintiff under the RPG marks are dissimilar to the optical services and pharmacy services provided by the Defendants under their trademarks, it will make no difference to the cause of action of passing off. The principle that a common field of activity is not essential to succeed in case of passing off is well established.
- It is settled law that registration of a trademark by Defendant is no defense to an action for passing off. Registration does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. Priority in adoption and use of a trademark is superior to priority in registration.
- Defendants’ argument that they are operating only in Kolkata cannot be accepted as Plaintiff’s goods and services under its RPG trademarks are available throughout India. They have secured prior registrations for its RPG marks which extend to the entire territory of India.
- Defendants’ adoption of the impugned marks is not bonafide as it is inconceivable that they were unaware of the Plaintiff’s RPG marks which have been in use for more than 30 years.
Considering the above findings, the Court granted a preliminary injunction restraining the Defendants from using the mark ‘RPG’ concerning their optical and pharmacy business until the disposal of the suit.