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Khadim India Ltd. v. Bata India Ltd.
Factual and Procedural Background
This interim application arises from a trademark infringement suit involving two shoe manufacturers. The plaintiff has been using the registered trademark “Pro” since 1997, including a registered word mark and a stylised label mark with the phrase “Speeding Style” beneath it, affixed inside the heel area of their shoes. The defendant, proprietor of the trademark “Power” and an arrow mark, affixed the words “Pro Series” inside their shoes. The plaintiff alleges that this constitutes infringement of their registered trademark and seeks an injunction to restrain the defendant’s use of “Pro Series”. The court heard submissions on the matter and made prima facie findings, leading to an interim order.
Legal Issues Presented
- Whether the defendant’s use of the words “Pro Series” inside their shoes amounts to infringement of the plaintiff’s registered trademark “Pro”.
- Whether the plaintiff is entitled to an injunction restraining the defendant from using the mark “Pro Series”.
- Whether the expression “Pro Series” is being used as a trademark under the meaning of the Trademarks Act, 1999.
- Whether the common use of the word “Pro” by other manufacturers and limited retail availability affects the plaintiff’s right to injunction.
Arguments of the Parties
Appellant's Arguments (Plaintiff)
- The plaintiff is the registered proprietor of the trademark “Pro” with exclusive rights under Section 28 of the Trademarks Act, 1999.
- Use of the mark inside the shoe constitutes "use" under Section 29(6) of the Act.
- Cited Kaviran Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) to assert that visual or phonetic similarity suffices to establish infringement without further evidence of deception.
- Relied on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 to argue that injunction is a matter of right in such cases.
- Also cited R.R Proteins & Agro Ltd. v. Hari Shankar Singhania (2010 (3) CHN (Cal) 912) supporting the above principles.
- Contended that other manufacturers using “Pro” were not marketing shoes in the relevant market and thus do not affect plaintiff’s rights.
Respondent's Arguments (Defendant)
- The defendant owns the well-known brand “Power” and a registered arrow trademark.
- Argued that “Pro Series” was not used as a trademark but merely as descriptive words, thus no injunction should be granted.
- Relied on Section 29 and the definition of trademark under Section 2(1)(zb) of the Trademarks Act, 1999, emphasizing that a trademark must be graphically representable.
- Asserted that “Pro” is a common English word and that the shoes were sold only through defendant’s retail shops, reducing likelihood of deception.
- Produced evidence that other well-known brands (Adidas, Chrome, Comfort) also use “Pro” in their marks, suggesting the term has become common and should not be monopolized.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Kaviran Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) | Visual or phonetic similarity of marks alone establishes infringement without need to prove deception. | The court relied on this principle to hold that the defendant’s mark being visually similar to plaintiff’s registered mark suffices to establish infringement. |
| Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 | In cases of trademark infringement with similarity, injunction is ordinarily granted as a matter of right. | The court applied this precedent to justify granting an injunction in favor of the plaintiff. |
| R.R Proteins & Agro Ltd. v. Hari Shankar Singhania (2010 (3) CHN (Cal) 912) | Followed Supreme Court decisions on trademark infringement and injunctions. | The court recognized this decision as supportive of the plaintiff’s entitlement to relief. |
Court's Reasoning and Analysis
The court examined the use of “Pro Series” on the defendant’s shoes and rejected the defendant’s contention that these words were not used as a trademark. The visual inspection of the shoe confirmed that “Pro Series” was prominently placed inside the heel area, indicating trademark use under Section 29 of the Trademarks Act, 1999. The court acknowledged the plaintiff’s ownership of the registered word mark “Pro” and the registered label mark, along with copyright over the label.
The court held that the existence of other registered marks containing “Pro” as a prefix does not affect the plaintiff’s exclusive right to the mark “Pro” alone. The court relied on the 1965 Supreme Court precedent that similarity of marks coupled with registration entitles the registered proprietor to restrain unauthorized use without requiring proof of deception. The court found the defendant’s mark visually similar to the plaintiff’s and therefore infringement was established prima facie. The court further cited the Midas case to emphasize that injunction is the normal consequence in such cases.
Accordingly, the court granted interim relief including injunction and symbolic possession. It also appointed Joint Receivers to monitor inventory and compliance with the order, allowing the defendant to sell existing stock only after removing the infringing “Pro Series” expression.
Holding and Implications
The court granted an interim injunction restraining the defendant from using the mark “Pro Series” on their shoes, recognizing this as an infringement of the plaintiff’s registered trademark “Pro”.
The defendant was ordered to provide inventory details to Joint Receivers and was permitted to sell existing stock only after obliterating the infringing mark. Joint Receivers were appointed to oversee compliance. The order refused the defendant’s prayer for stay of operation.
This decision directly protects the plaintiff’s trademark rights during the pendency of the suit and does not establish any new precedent beyond applying established principles of trademark law regarding infringement and injunctions.
I.P Mukerji, J.:— Both the plaintiff and the defendant are manufacturers of shoes.
This is an interim application brought in aid of the above suit, complaining of infringement of the trademark “Pro”.
The facts are these.
The plaintiff has been manufacturing about 300 varieties of shoes using the above trademark.
They have been using the word mark “Pro” from 10th June 1997. This word mark was registered on 16 June 2005 with effect from 10 June 1997. They are also using a label mark comprising of this word mark “Pro” with a stylised design over it, from 13 October 2009. This label mark was registered on 16 March 2011. They also have a copyright of this mark obtained on 19 July 2011. I may also add that beneath the word “Pro” are written the words “Speeding Style”.
This mark is affixed inside the shoe at the place where the heel rests. The dispute arises between the parties in this way.
The defendant is the registered proprietor of an arrow mark. They manufacture a certain kind of sport shoes using the trade name “Power”. What the defendant has done is that while affixing their trademark in the inside part of the shoe, they have also used the words “Pro Series”.
The plaintiff complains that this is an outright infringement of their registered mark and that the Court should pass an order of injunction restraining the defendant to use this mark.
Now the submissions of the learned Counsel for the parties.
Mr. S.K Kapur, learned Senior Counsel appearing for the plaintiff shows me Section 28 of the Trademarks Act, 1999. He submits that being the registered proprietor of the mark “Pro” the plaintiff has the exclusive right to use the mark. Use of the mark is effected by affixation thereof in the inside part of the shoe as stated above. Therefore, that tantamounts to use of the mark under Section 29(6) of the said Act.
He cites the well known case of Kaviran Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories reported in AIR 1965 SC 980 (paragraph 28). He submits that if the two marks are similar visually or phonetically then evidence of deception caused to the public need not be led. Infringement is established. The Court should grant an injunction as a matter of right as held in the case of Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia reported in (2004) 3 Supreme Court Cases 90. He also cited R.R Proteins & Agro Ltd. v. Hari Shankar Singhania reported in 2010 (3) CHN (Cal) 912, a decision of our Court which followed both the Supreme Court decisions.
Now the submissions of Mr. Gautam Chakraborty, learned Senior Counsel for the defendant.
He submitted that the defendant was the owner of the well-known brand “Power”. They are also the registered proprietor of the trademark represented by an inverted arrow. It is true that they are using the words “Pro Series” in the inside part of the shoes, but they are not using these words as a mark. If it was not being used as a mark the plaintiff had no right to claim injunction. He cited Section 29 of the said Act and a passage from a book by Venkateswaran fifth edition 2010 page 1303 for this purpose. He showed me Section 2(1)(zb) of the Trademarks Act, 1999 to submit that a trademark had to be capable of being represented graphically.
He also submitted that the expression “Pro” was a common English word. Furthermore, these shoes were only sold from the retail shops of Bata and were not available in the market. Therefore, a customer could not be deceived.
He also showed me that various organisations like Adidas, Chrome and Comfort were using the expression “Pro” in their marks. All these marks were registered. A bunch of documents was handed up to the Court as evidence of this. It was argued that since the mark had become very common, no injunction should be granted. To this Mr. Kapur submitted that none of these manufacturers were marketing shoes in the market.
Now my prima facie findings:
(a) I am unable to accept the contention of the defendant that the word “Pro Series” was not being used as a trademark. On my visual examination of the shoe produced for my view, the words “Pro Series” were written on the inside part of the shoe in the area where the heel rests. Even if the word “Power” had been used and the trademark arrow displayed on the shoe, in my opinion, all these marks “Power”, arrow and “Pro Series” were intended to be used as trademarks under Section 29 of the Trademarks Act, 1999.
(b) There is no dispute that the plaintiff is the proprietor of the word mark “Pro” and the matching label mark as stated above. They also have copyright in the label, as stated above.
(c) If such is the case it does not matter, in the absence of rectification of the trademarks register, whether the word “Pro” is of common use or that the shoes are sold only in retail shops of the defendant or that there are other manufacturers who are registered proprietors of the mark, a part of which is “Pro”. I may add that in the documents shown to me the registered marks were prefixed by the word “Pro”. “Pro” by itself is not the registered mark of any other person.
(d) In the above 1965 Supreme Court case it was said that if two marks were similar and one of them was registered, the registered proprietor of the mark could bring an action to restrain the unregistered user of the mark from using the mark. Furthermore, if there was visual and phonetic similarity no further evidence was required.
(e) In this case, the mark of the defendant is visually similar to the mark of the plaintiff and in my opinion no further evidence is required to establish the right of the plaintiff. Furthermore in the case of Midas (supra), it has been held by the Supreme Court that in such a situation injunction is a matter of course.
In that view of the matter, I pass an order in terms of prayer (a) of the notice of motion. I also pass an order in terms of prayer (f) of the Notice of Motion but confined to symbolic possession only.
The defendant will furnish to the Joint Receivers an inventory of the stock with the above trademark today and the stock on the date the inventory is furnished by them. The Joint Receivers will cross check the inventory, on a random basis.
However, the defendant will be entitled to sell the above products by obliterating the expression “Pro Series” from the shoes. In that event they will furnish a fresh inventory to the Joint Receivers of the entire stock of the subject shoes with regard to which this exercise has been done. The Joint Receivers will be at liberty to cross check as above and thereafter the defendant will be permitted to sell the changed product.
The Joint Receivers may engage a specialized agency for verifying the inventory furnished by the defendant, at the cost of the plaintiff.
Mr. Swarnendu Ghosh, Advocate of the Bar Library Club and Ms. Paramita Pal, Advocate of the Bar Association are appointed Joint Receivers at an initial remuneration of 2000 GMs. and 1000 GMs. respectively to be paid by the plaintiff.
The joint Receivers are to file a report by the adjourned date. Affidavit-in-opposition be filed by 21st August, 2012. List this application on 5 September, 2012; affidavit-in-reply in the meantime.
Stay of operation of this order is prayed for by learned counsel for the defendant. Such prayer is considered and refused.
All parties concerned are to act on a signed photocopy of this order on the usual undertakings.
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