The Bombay High Court recently considered an interim injunction application in a trademark dispute between Rynox Gears and Steelite India, involving the competing marks “RYNOX” and “RHYNOX” in the motorcycle accessories market. The case raised questions of trademark infringement, passing off, prior use, and the consequences of inconsistent pleadings in commercial litigation.

Background of the Dispute

The Plaintiff, Rynox Gears, is a partnership firm established in 2012, engaged in the manufacture and sale of motorcycle protective gear such as jackets, gloves, and luggage systems under the mark “RYNOX.” The Plaintiff asserted that the mark forms a key part of its trade identity and enjoys substantial goodwill and reputation, supported by registrations, sales figures, and promotional activities.

The dispute arose when the Plaintiff discovered in June 2023 that the Defendant, Steelite India, had obtained registration for the mark in Class 9, specifically for helmets. Alleging deceptive similarity and likelihood of confusion, the Plaintiff issued a cease-and-desist notice in October 2023 and subsequently filed a suit when the Defendant resumed use of the impugned mark.

Plaintiff’s Case

The Plaintiff’s claims were founded on prior use since 2012 and registration of the “RYNOX,” and marks, with an application filed in August 2016 and registration granted in 2017. It also relied on its device mark registration obtained in 2019.

Key submissions included:

1. The marks “RYNOX” and “RHYNOX” are phonetically identical and likely to confuse consumers.
2. The Defendant’s goods, helmets are allied and cognate to the Plaintiff’s motorcycle gear, sharing trade channels and consumer base.
3. Substantial goodwill exists in the “RYNOX” mark across motorcycle accessories.
4. Evidence of actual confusion was cited, including an instance where an e-commerce platform listed the Defendant’s product under the Plaintiff’s mark.

Defendant’s Defence

The Defendant contested both infringement and passing off, raising several defences:

1. The mark “RHYNOX” was independently adopted in 2016, inspired by the rhinoceros, and selected after a trademark search.
2. Registration was obtained in 2017, and continuous use has been made specifically for helmets.
3. The Plaintiff does not manufacture helmets and has misrepresented this fact.
4. The alleged cease-and-desist notice was never received.
5. The parties operate in distinct markets, motorcycle apparel versus helmets, which require specific certifications and cater to a different segment.
6. The Plaintiff’s delay and lack of awareness of the Defendant’s activities since 2017 indicate separate market presence.

The Defendant also challenged the Plaintiff’s entitlement to equitable relief, citing inconsistencies and alleged false statements in the pleadings.

Issues Before the Court

The Court examined:

1. Whether a prima facie case of trademark infringement was made out.
2. Whether the Plaintiff established the classical trinity of passing off, goodwill, misrepresentation, and damage.
3. The effect of alleged suppression and misstatements on the Plaintiff’s claim for equitable relief.

Court’s Analysis

• Trademark Infringement

The Court noted that both parties were registered proprietors of their respective marks. Moreover, the Plaintiff had not challenged the validity of the Defendant’s registration.
It further observed that:

1. The Defendant applied for registration in January 2017 after conducting a search.
2. At that time, the Plaintiff’s mark had not yet been published.
3. The Plaintiff’s mark was published later in January 2017 and registered in June 2017.

In these circumstances, the Defendant’s registration was not prima facie illegal or fraudulent. Accordingly, the Court held that no case for infringement was made out.

• Passing Off and Clean Hands

The Court placed significant emphasis on inconsistencies in the Plaintiff’s pleadings:

1. The Plaintiff initially claimed to be manufacturing and marketing helmets since 2012.
2. When challenged, it shifted its position to argue that its goods are allied and cognate to helmets.
3. The Court found the original assertion regarding helmets to be prima facie incorrect.

Similarly, with respect to the cease-and-desist notice:

1. The Plaintiff claimed the notice had been received and acted upon by the Defendant.
2. However, records showed the notice was returned unserved.
3. The Plaintiff later stated that proof of delivery had been misplaced.

The Court held that these misstatements were material and appeared to have been made to justify the delay in filing the suit. Such conduct, it observed, undermines a party’s entitlement to equitable relief.

Reiterating the principle that a litigant must approach the Court with clean hands, the Court held that suppression or misrepresentation of material facts can itself be a ground to deny relief at the threshold.

• Goodwill and Market Overlap

On the substantive elements of passing off:

1. The Court found that the Plaintiff failed to establish goodwill in the helmet segment as of 2016, when the Defendant adopted its mark.
2. The Plaintiff’s business was primarily in apparel and accessories, not helmets.

While the Plaintiff argued that the goods were allied and cognate, the Court was not persuaded that sufficient market overlap existed to establish misrepresentation.

• Similarity of Marks

The Court conducted an overall comparison of the marks and found:

1. is a composite mark with a rhinoceros device and stylized lettering.
2. The visual and structural elements distinguished it from “RYNOX.”

On this basis, the Court held that the marks were not deceptively similar to cause confusion.

• Evidence of Misrepresentation and Damage

The Plaintiff relied on a single instance of alleged confusion on an e-commerce platform. The Court held that:

1. A solitary instance is insufficient to establish likelihood of deception.
2. There was no evidence that the Defendant marketed its goods as those of the Plaintiff.

Further, in the absence of goodwill in the relevant segment, the Plaintiff failed to establish damage.

Decision

The Court concluded that:

1. No prima facie case of infringement was made out.
2. The Plaintiff failed to establish the elements of passing off.
3. Material inconsistencies and misrepresentations in the pleadings disentitled the Plaintiff to equitable relief.

Accordingly, the application for interim injunction was dismissed.

Comment

The ruling serves as a reminder for litigants in commercial disputes to ensure accuracy and consistency in pleadings, particularly when seeking equitable remedies such as injunctions.