,,,,,,
Amit Bansal, J",,,,,,
I.A.12276/2021 (early hearing),,,,,,
1. For the reasons stated in the application, the same is allowed.",,,,,,
I.A.578/2020 (O-XXXIX R-1 &2), I.A.2481/2020 (O-XXXIX R-4)",,,,,,
2. By way of the present judgment, I propose to decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code",,,,,,
of Civil Procedure, 1908 (CPC) for grant of interim injunction pending the disposal of the suit and the application filed on behalf of the defendant under",,,,,,
Order XXXIX Rule 4 of the CPC seeking vacation of the ex parte ad interim injunction granted on 17th January, 2020, in favour of the plaintiff.",,,,,,
3. The plaintiff has filed the present suit seeking permanent injunction against the defendant from infringing/passing off, inter alia, the trademark,",,,,,,
copyright, logo, trade dress of the plaintiff and other ancillary reliefs. In the suit, it has been pleaded that:",,,,,,
(i) Plaintiff’s company and its predecessors have been using the trademark/logo ‘STANDARD’ in relation to electrical products, including",,,,,,
switch gears, fuse gears, cables, insulation wires, miniature circuit breakers since the year 1958.",,,,,,
(ii) Plaintiff has obtained a number of trademark registrations in its favour for the mark ‘STANDARD’ in India as well as foreign jurisdictions,",,,,,,
such as Kuwait, Africa, Nigeria, Saudi Arabia, etc.",,,,,,
(iii) Due to extensive and long usage, the trademark/trade name ‘STANDARD’ has gained immense popularity and reputation in relation to the",,,,,,
electrical products among the plaintiff’s consumers and the general public. In support of this, the plaintiff has given its gross annual turnover as",,,,,,
well as the amount spent on advertising and sales promotion for the years 2018â€"19.,,,,,,
(iv) Plaintiff’s trademark ‘STANDARD’ has been declared a well-known mark under Section 11(6) of the Trade Marks Act, 1999 by this",,,,,,
Court in the order dated 8th March, 2016 in CS(OS) 2966/2015.",,,,,,
(v) Plaintiff’s trademark, brand name and trading style ‘STANDARD’ has acquired distinctiveness and secondary meaning.",,,,,,
image004.jpg,,,,,,
(vi) Defendant has dishonestly adopted the impugned marks and and has also copied the mark,,,,,,
‘STANDARD’ and has replaced the letter ‘D’ occurring at the end of the word STANDARD with the letter ‘O’ to form the,,,,,,
impugned trademark ‘SS STANDARO’.,,,,,,
(vii) It is alleged that the defendant has not only copied the trademark of plaintiff but also copied the font thereof and has adopted the device of the,,,,,,
triangle in the impugned trademark in which the letter ‘S’ is contained, so as to look deceptively similar to the logo of the plaintiff.",,,,,,
(viii) In June, 2019, the plaintiff came across the defendant’s impugned mark, which was published in the trademark journal in February, 2019 and",,,,,,
filed an opposition against the same.,,,,,,
(ix) In August, 2019, counter-statement with respect to the defendant’s trademark application was filed by the defendant.",,,,,,
(x) Pursuant to an investigation conducted on behalf of the plaintiff, the plaintiff came to know that defendant has not only copied trademarks but has",,,,,,
also copied the packaging and other elements of the trade dress of the plaintiff’s products to deceive the consumers into believing that the,,,,,,
impugned products are those of the plaintiff.,,,,,,
(xi) Defendant is using the impugned trademarks in relation to electrical goods such as MCB, switch gears, etc., which are identical to the goods being",,,,,,
sold by the plaintiff.,,,,,,
(xii) In view of the fact that the plaintiff is the registered proprietor and prior adopter of the trademark ‘STANDARD’, it is entitled to protect its",,,,,,
registered trademark as also its goodwill and reputation.,,,,,,
4. The suit came up for hearing before the Court on 17th January, 2020, when, finding a prima facie case in favour of the plaintiff, this Court was",,,,,,
pleased to pass an ex parte ad interim injunction order restraining the defendant from using the trademark ‘STANDARD’ / ‘SS,,,,,,
image007.jpg,,,,,,
image004.jpg,,,,,,
STANDARO’ or the logo/device of and , or any other logo/device, trade dress deceptively similar to the",,,,,,
plaintiff’s registered trademarks.,,,,,,
5. The defendant in his written statement has, inter alia, pleaded that:",,,,,,
image004.jpg,,,,,,
(i) The defendant is a registered proprietor for the trademark under Class 9 and has been using the said trademarks since 1st,,,,,,
November, 2003.",,,,,,
(ii) The letters ‘SS’ in the defendant’s trademark initially stood for ‘Shree’ and ‘STANDARO’ but, later ‘Shree’ was",,,,,,
deleted by the defendant.,,,,,,
image004.jpg,,,,,,
(iii) The goods of the defendants using the logo/device are sold only in Tamil Nadu.,,,,,,
image007.jpg,,,,,,
(iv) The defendant has never used any trademark in the name of ‘STANDARD’ or ‘SS STANDARD’ or .,,,,,,
(v) The claim of the plaintiff is barred due to delay and laches as the plaintiff was aware of the user by the defendant since 2003 but chose to file the,,,,,,
present suit in January, 2020.",,,,,,
(vi) The plaintiff has not filed any rectification proceeding in respect of the registered trademark of the defendant.,,,,,,
,Plaintiff,,,Plaintiff,,
Mark/Logo,,,,image004.jpg,,
Mark/Logo,,,,,image007.jpg,
,Plaintiff,Defendant,,,,
Product Packaging,(Before 2015),,,,,
,,,,,,
,(After 2015),,,,,
,,,,,,
claim of the plaintiff with regard to passing off, nor would it come in the way of comparison of the label/device marks of the plaintiff and the",,,,,,
defendant, which have to be seen as a whole for purpose of grant of relief of infringement on account of the long usage of the word mark",,,,,,
‘STANDARD’ which has attained a secondary meaning so as to identify the goods of the plaintiff.,,,,,,
17. In this regard, reference may be made to Shree Nath Heritage Liquor Pvt. Ltd. V. M/s. Allied Blender & Distillers Pvt. Ltd., (2015) 63 PTC 551",,,,,,
(Delhi). The relevant portions of this judgment are set out below:,,,,,,
“15. We first need to discuss the effect of the disclaimer on the word ‘Choice’ in two of the respondent’s trademark,,,,,,
registrations. In the decision reported as AIR 1955 SC 558 Registrar of Trademarks v. Ashok Chandra Rakhit, regarding passing off, the",,,,,,
Supreme Court held that statutory disclaimer will have no bearing if the respondent’s trademark has acquired secondary meaning. In,,,,,,
the facts of the present case, our prima facie view is in favour of the secondary meaning of the respondent’s mark ‘Officer’s",,,,,,
Choice’ in light of the respondent’s long use and sales under the said trademark. Hence, the question of disclaimer is not relevant",,,,,,
to the question of passing off in the present case.,,,,,,
16. Turning to the effect of disclaimer with respect to trademark infringement, it is pertinent to note at this point that only two registrations",,,,,,
of the respondent, i.e. registrations No. 489582 and 538927, have the word ‘Choice’ disclaimed. The respondent has several",,,,,,
trademark registrations, albeit some of which are labels, for alcoholic beverages and a host of other goods, for ‘Officer’s",,,,,,
Choice’ without any disclaimer.,,,,,,
17. A disclaimer in a trademark does not travel to the market place. Hence, for the purpose of comparison of two marks, the disclaimed",,,,,,
portion can also be considered. Therefore, the marks in the two registrations of the respondent with a disclaimer can be considered as a",,,,,,
whole even for infringement.â€,,,,,,
18. It has also been held in the said judgment that a subsequent dishonest user cannot take shelter under Section 17(2) of the Trade Marks Act, 1999",,,,,,
to contend that the statute permits it to commit passing off. Admittedly, the plaintiff is a prior user of the word mark ‘STANDARD’ as well as",,,,,,
device marks and the defendant has adopted a deceptively similar mark wherein a dominant part of the defendant’s registered mark/label is being,,,,,,
used.,,,,,,
19. The plaintiff has made out a prima facie case in its favour for grant of interim injunction. The balance of convenience also is in favour of the,,,,,,
plaintiff and against the defendant in as much as use by the plaintiff of the marks/logos according to the plaintiff is prior to that by the defendant.,,,,,,
20. During the course of the submissions, the counsel for the defendant made the submission that the defendant is prepared to give up the colour",,,,,,
scheme of blue and white being used by the defendant so that there is no similarity with the orange, white and blue colour scheme used by the plaintiff",,,,,,
and also that the defendant is willing to amend the word mark ‘STANDARO’ to being used in lowercase and in a different font in the script so,,,,,,
that there is no visual similarity with the mark ‘STANDARD’ being used by the plaintiff.,,,,,,
21. The aforesaid changes suggested by the defendant were not acceptable to the plaintiff.,,,,,,
22. The ex parte injunction granted by this Court on 17th January, 2020 was on the basis of the impugned marks being used by the defendant at that",,,,,,
point of time. The said injunction order covered trademarks ‘STANDARD’ / ‘SS STANDARO’ and the logo/device and .,,,,,,
23. This injunction order would cover all trademarks that are identical/deceptively similar to the trademarks/logos and packaging of the plaintiff.,,,,,,
Therefore, it is not for the Court, at this stage, to determine whether the proposed changes in the trademark by the defendant would be covered within",,,,,,
the ambit of the injunction order passed by this Court on 17th January, 2020.",,,,,,
24. In any case, the said marks have not been placed before this Court. The defendant may, if so advised, use the amended label/logo, subject to the",,,,,,
right of the plaintiff to challenge the same in appropriate proceedings.,,,,,,
25. The counsel for the defendant further submitted that the defendant is a small time trader, and should be allowed to sell the goods seized by the",,,,,,
Local Commissioner since they are of immense value for a trader like the defendant. The defendant accordingly sought modification of the order,,,,,,
dated 17th January, 2020 to the extent that he may be permitted to sell the goods seized by the Local Commissioner.",,,,,,
26. The goods have been duly described by the Local Commissioner in the report dated 07th February, 2020. The goods were given on superdari to",,,,,,
the defendant with the undertaking to produce the seized goods as and when called by this Court.,,,,,,
27. Taking into account that the defendant is a small time trader, the defendant is permitted to sell the aforesaid goods subject to the following",,,,,,
conditions:,,,,,,
I. The defendant shall only put the aforesaid goods for sale after erasing the impugned marks/logos from the products as well as the packaging.,,,,,,
II. The defendant shall file an affidavit to the effect that other than goods which were seized by the Local Commissioner and handed over on,,,,,,
superdari basis, the defendant or his agents, stockiest, distributors shall not in any manner sell, advertise or in any manner deal with the goods bearing",,,,,,
the impugned trademarks and logos.,,,,,,
III. The defendant shall also undertake to give detailed and correct accounts of the sale of the said goods done pursuant to orders of this Court.,,,,,,
28. Accordingly, the order dated 17th January, 2020 is confirmed, subject to the aforesaid modification, till the disposal of the suit. I.A. No. 578/2020",,,,,,
of the plaintiff under Order XXXIX Rules 1 and 2 CPC and I.A. No. 2481/2020 of the defendant under Order XXXIX Rule 4 CPC stand disposed of,,,,,,
in above terms.,,,,,,
CS(COMM) 20/2020 & I.A.5063/2021 (O-XXXIX R-2A),,,,,,
29. List before the Joint Registrar on 14th April, 2022.",,,,,,
