201907.01
12

Court holds registered proprietor is not expected to pursue every infringement

A number of interesting issues have come up in this matter a) whether a registered proprietor can enforce and restrain another proprietor from using its registered mark? b) is a registered proprietor obligated to pursue every party that infringes its mark c) how strong is the trademark search report in support of the contention that several parties are using a mark identical or similar to the proprietor’s mark.

The plaintiffs, Purshotam Keshwani and three others (Purushotam) filed suit for trademark infringement, passing off, etc, against the defendants, Nishant Mitrasen Mahimtura and three others (Nishant) to restrain them from using the mark LIBAS in relation to their business. Purushotam’s injunction application is being considered by the Court. Both parties claim to be registered proprietors of a label/device mark, the pertinent element of which is the word ‘LIBAS’.

Purushotam in the suit contends:

  1. They are the registered proprietor of the label mark ‘LIBAS’ in classes 24 and 25 since 2002 and 2009 respectively.
  2. Nishant’s registration for an identical mark even though in different class is much later to Purushotam.
  3. When Nishant applied for registration of the mark LIBAS in Class 37 in the year 2007 Purushotam already had a valid and subsisting registration for an identical mark in Class 24.
  4. Nishant’s registration for the LIBAS mark in Class 37 pertains to retailing of garments, accessories, shoes, ladies wear, leather/art/synthetic garments and accessories.
  5. Nishant has not filed any document to evidence their use of the mark.

Nishant counters the allegations:

  1. Their mark is distinguishable as it also contains the words ‘RIYAZ GANGJI’ along with LIBAS.
  2. They have international offices in several countries.
  3. Purushotam’s mark is generic and there are several entities using the mark LIBAS.
  4. There is delay and laches in filing the suit.

Rejoinder by Purushotam

In rejoinder Purushotam contends that Nishant is 1) estopped from arguing that the mark is generic 2) The argument regarding other entities using the mark is not correct as no evidence is adduced 3) Most of the registrations relied on by Nishant are abandoned 4) Addition of the words ‘RIYAZ GANGJI’ is irrelevant as the pertinent element of the rival marls is the word LIBAS 5) Infringement and passing off is a recurring cause of action and delay is immaterial.

After considering the pleadings, documents and arguments the court held:

  • Though the registrations of Purushotam and Nishant are for label marks, the device/label in both is nothing but the word LIBAS. Both parties are using the mark for same goods.
  • Once the dominant word/s on the label/device of both are identical interim injunction has to follow as the test is not of photogenic or perfect memory but of imperfect memory/recollection. Even otherwise, the words ‘RIYAZ GANGJI’, is likely to be considered as a sub-brand of Purushotam i.e., a line of clothing under the mark ‘LIBAS’, by ‘RIYAZ GANGJI’.
  • It is not in dispute that Purushotam is the prior adopter/user/registrant/of the mark LIBAS and thus, their rights have to prevail over the rights of Nishant.
  • With regard to delay it will be a relevant factor only in ex-parte consideration of the application for interim stay but not at the after notice stage.
  • Nishant’s contention that there are several entities using the mark is vague nor have they disclosed the extent of use and thus, it ought to fail. Further, Purushotam is not expected to rush against each and every person and is expected as a prudent businessman to take action only against those, use by whom affects their mark.
  • Purushotam has made out a prima facie case and balance of convenience is also in their favour.

In light of the above the Court granted an injunction in favour of Purushotam restraining Nishant from using the mark/name LIBAS during the pendency of the suit.