Substantial delay by ‘CAMPUS’ tilts the balance in favour of ‘CAMPS’
In the case at hand, although there are substantial similarities in the competing marks, there is no material on record for the Court to conclude that Defendants’ adoption was dishonest or so to say, that Defendants have misrepresented their marks to be that of the Plaintiff’s. On the contrary, adoption of the impugned mark prima facie appears to be in good faith and same has been in long and continuous use, without any protest or opposition from the Plaintiff. Thus, the Plaintiff has failed to satisfy the classic trinity test of passing off.
The parties are shoe manufacturers and at loggerheads over the use of the mark . The Plaintiff, Campus Activewear Limited (CAL), filed the suit to restrain the Defendant, Rama Shankar Garg and Ors (Ram Shankar), from using the mark CAMPS and in relation to footwear. CAL has sought an interim, interlocutory injunction against Ram Shankar, and the post discusses the rival contentions and the Court’s decision.
CAL in support of its case stated:
- They are the registered proprietor of the mark CAMPUS and formative marks , , , etc. They also hold registrations for the logos , and .
- The aforesaid marks have been in continuous commercial use since 1984 and have acquired substantial goodwill and reputation.
- They have about 20,000 retail outlets across India and conduct online business operations through their website.
- They have secured protection in several countries and the registered marks possess all traits of a well-known trademark. The earliest registration for the mark “CAMPUS” dates back to 12th November 1990.
- Ram Shankar has copied the original and unique logo, get-up/trade dress, and footwear designs, tarnishing CAL’s image and brand equity.
- Ram Shankar’s use of an identical colour with reverse red double-tick on top of the letter ‘m’ is clearly to ride on CAL’s goodwill, thereby causing confusion among the trade and public regarding origin of goods.
Ram Shankar countered the injunction application on the following:
- The ‘CAMPS’ mark has been registered since October 2001 and has been used since 1980 and, thus, has superior rights on account of prior use.
- CAL commenced use of the mark CAMPUS only after registration of Ram Shankar’s mark. CAL has filed the application on a ‘proposed to be used’ basis, and no document on record shows that their use predates that of Ram Shankar.
The Court after considering the pleadings, arguments and documents made the following observations:
- The rival marks, on comparison, have structural and phonetic similarities being two commonly used English words, ‘CAMPUS’ and ‘CAMPS’. However, in the instant case, both the parties have an equal legal standing regarding their statutory rights, which encompasses exclusivity and legal protection under the Act. The parties have held their respective trademark registrations for a significant time. In this regard, it has to be considered that Ram Shankar’s ‘CAMPS’ mark was accorded registration in October 2001.
- The mark ‘CAMPS’ has remained on the Register for more than two decades, and no action for rectification has been disclosed in the pleadings. As per the online records of the Trademark Registry, CAL filed a rectification petition against Ram Shankar’s mark in December 2022. However, this does not form a part of the pleadings, nor was it mentioned during the hearing. Thus, in the absence of a plea of invalidity, CAL cannot press for relief of temporary injunction on the ground of infringement of their registered trademarks.
- As the rival marks are similar in the instant case, prior use attains significance. It is a settled proposition of law that prior user of a trademark has superior rights and takes precedence over those of a registered proprietor. CAL’s mark was applied on a ‘proposed to be used’ basis in November 1990, indicating that the mark had not been put to use at that time. Mere adoption of the mark for future use does not suffice to claim ownership or use of the mark. Documents on record do not reveal the use of CAL’s mark since 1990. On the other hand, Ram Shankar’s application for registration filed in 2001 had claimed user since 1st October 1980. Moreover, they have placed on record several invoices dating back to 1986 as well as affidavits of suppliers/distributors who have affirmed business transactions in ‘CAMPS’ since 1980.
- Ram Shankar’s adoption and use of the ‘CAMPS’ mark precedes CAL’s registration; thus, the adoption cannot be considered dishonest. There is no material on record to conclude that Ram Shankar had knowledge of CAL’s registered marks and copied them to deceive consumers.
- During the course of the hearing the Court’s attention was drawn to the fact that in addition to the ‘CAMPS’ mark, Ram Shankar has been using “CAMPASS” and ““, so as to come close to CAL’s registered mark. Ram Shankar with a view to resolve the matter submitted that they will not use the marks “CAMPASS” or and also modify the mark by removing the reverse red double tick over the letter ‘m’. However, CAL was not amenable to the said proposal and insisted on an interim injunction being granted.
In light of the above, the Court was of the opinion that the facts of the case do not warrant a grant of temporary injunction in favour of CAL and accordingly dismissed the application. However, the Court clarified that in line with the submission of Ram Shankar during the hearing they are restrained from using the mark CAMPASS, and the reverse red double tick during the pendency of the suit.