Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd.
2006 (32) PTC 192 (Del.)
Plaintiff, Hi-Tech Pipes Ltd. was established in 1985 and started manufacturing steel pipes in 1988 under the trademark ‘Gujarat’. As per the Plaintiff, this trademark had acquired secondary meaning and distinctiveness on account of its open, regular, continuous, extensive and exclusive use along with large scale publicity and advertisement. Plaintiff was based in New Delhi. Defendant Company, on the other hand, was also a manufacturer of steel pipes, based in Gujarat itself. Defendant was also using the mark ‘Gujrat’ for steel pipes.
Plaintiff alleged that the Defendant is attempting to pass off his goods as that of the Plaintiff by use of the trade mark “Gujrat”, as the Plaintiff is a prior user.
The question before the Court was whether or not “Gujarat” per se can be used as a trademark or not and whether the continuous prior user of the mark by the Plaintiff entitles it to an exclusive user and restraint order against the Defendant.
Arguments on behalf of the Plaintiff:
Gujarat has never been known for tubes and thus can be used as a trademark. Analogically, “Kolhapuri” cannot be used as chappals while it can be used for a perfume.
A passing off action would certainly lie at the instance of a business man, if his rival caries on his business in the name which is calculated to deceive or which may divert the business from the Plaintiff to the Defendant or it may occasion a confusion between the two businesses(Daimler Motor Car Co.(1904) Ltd.v. London Daimler Co. Ltd (1907) RPC 379).
In the case of Geepee Ceval Proteins and Investment Pvt. Ltd v. Saroj Oil Industry; 2003 (27) PTC 190 (Del), the Hon’ble Court had granted interim injunction against the Defendant who was using the trade name “Chambal” for identical product as that of the Plaintiff on the basis that the Plaintiff had built a good reputation and the trade mark ‘Chambal’ had acquired distinctiveness with the Plaintiff’s product, although the Defendant’s industry was situated on the banks of Chambal river.
The mere fact that geographical descriptive name is adopted is not always a defence in passing off action and an injunction can be granted.
Section 27 of The Trade Marks Act, 1999 favours the Plaintiff’s contention. In Nilgiri Dairy Farm v. S.A. Rathnasabhapthy, “Nilgiri Dairy Farm”; 1975 KLJ 505 was the trade name, though the Plaintiff was situated in Coimbatore; an action of passing off was held to be maintainable.
Arguments on behalf of the Defendant:
Plaintiff’s use of the said trademark is one of geographical mis-description as the Plaintiff is admittedly based in Delhi and has no operation or nexus with the State of Gujarat. Hence, Plaintiff is seeking to wrongfully acquire monopoly over the use of the name of State of Gujarat. As the Defendant company’s operations are based in Gujarat, it is an attempt to describe the origin of goods and amounts to descriptive usage of the mark.
Plaintiff’s trademark does not have inherent distinctiveness.
The issue that the Hon’ble Court considered was that of passing off.
Gujarat as a State is not known for it’s steel pipes and therefore the word “Gujrat” by the Defendant is not being used as descriptive of the origin of the goods.
Section 27(1) of the Trade Marks Act, 1999 stipulates that no person shall be entitled to institute any proceedings to prevent or recover damages of infringement of an unregistered trade mark, right of action against any person for passing off the goods is not extinguished.
The sales of the Plaintiff for over 15 years are running into crores under the trade mark “Gujarat”. The Defendant has entered the industry much later.
The use of the trade mark “Gujrat” by the Defendant comes under the ambit of passing off its goods as that of the Plaintiff’s, since by consistent prior use, the mark is associated with the product of the Plaintiff.
The Court granted a restraint order stopping the Defendant from using the trade mark “Gujarat” or “Gujrat”.
Author: Divyasha Mathur, ILS Law College, Pune