Mars Incorporated v. Kumar Krishna Mukherjee & Ors.

Mars Incorporated v. Kumar Krishna Mukherjee & Ors.

2003 (26) PTC 60 (Del)

Brief Facts:

Plaintiff was the proprietor of the Trademark ‘MARS’, which was registered in India and in as many as 170 countries. It was used in respect of chocolates, confectionery, preserved food products and other foodstuffs in India.

Defendants sought to incorporate a company named MARS FOODS PVT LTD., but had neither commenced the manufacturing nor commenced the sale of goods.

The Plaintiff, Mars Inc. filed a suit for permanent injunction against the Defendants, Kumar Krishna Mukherjee & Ors. for adopting and thereby, infringing their registered trademark ‘MARS’ in regard to food products, passing off of goods and resultant loss of goodwill and reputation. The suit was a quia timet action as no products/services bearing the mark ‘MARS’ were initiated by the Defendants.

Issue:

Whether the Plaintiff is entitled to initiate an action against the threatened invasion on it’s food items and confectionery goods and whether adopting the word ‘MARS’ in its Corporate name has rendered the Defendants liable for Quia Timet Action or not.

Arguments on behalf of the Plaintiff:

• The Adoption and use of the Plaintiff’s mark by the Defendants as part of their corporate name and trading style is clearly dishonest since the trademark registrations of the Plaintiff, being a matter of public record, constitute constructive notice to the Defendants of the Plaintiff’s statutory rights and the Defendants are deemed to have knowledge of such rights vested in the Plaintiff.

• Substantial goodwill and reputation of the Plaintiff exists in India in connection with the trademark MARS. Therefore, the object of the Defendants in adopting this trademark is malafide and/or to encash upon the goodwill and reputation of the Plaintiff.

• The confusion is worst as the Defendants have used the trade mark in respect of food items and the word food itself finds place in the corporate name of the Defendants. Plaintiff believes that there is a real and tangible possibility that the Defendants may start to manufacture and sell goods under the trademark MARS in the food sector as this is their stated objective in the memorandum filed at the time of incorporation.

Arguments on behalf of the Defendants:

• Defendants have merely adopted the trade mark of the Plaintiff as a part of corporate name and trading style.

• Admittedly Company of the Defendants is a company on paper only.

• It has neither started nor carried out any business nor have they filed annual returns or other mandatory documents.

Court’s Observations:

Quia Timet is actually a Latin word which means “because he fears or apprehends”. In legal terminology it has been defined in Osborne’s Concise Law Dictionary (London: Sweet and Maxwell, 8th edn. 1993, Bone and Rutherford) as an action by which a person may obtain an injunction to prevent or restrain some threatened act being done which, if done, would cause him substantial damage, and for which money would be no adequate or sufficient remedy.

The court placing reliance upon Direct Line Group Ltd. and Ors. v. Direct Line Estate Agency Ltd. and Ors., Chancery Division 374. and Marks & Spencer reported as Marks & Spencer Plc. v. One in a Million Ltd. and Ors. (1998) FSR 26 held that if the threatened act of Defendant is imminent and impending then one does not have to await consummation of the threatened injury to obtain preventive relief (Cleveland Opera Co.V. Cleveland Civic Opera Ass’n, 22 OA.400, 5 OL.297). To expect the aggrieved party to wait and watch for the opening of business or manufacturing or sale or goods under the apprehended infringement of trade mark is too much. A stitch in time always saves nine and that is what the essence of Quia Timet Action is.

A party who is under threat of infringement or passing off of its trade name cannot be left remediless or in lurch merely for the reasons that the said threat have not materialized causing damage or loss either in trade or reputation or goodwill.

The only tests for injunctive relief in Quia Timet Action are:-

(i) Whether it is likely to cause confusion or to deceive the purchasers as to source or origin of the trade mark or the goods to be sold in future under the said mark irrespective of the fact whether goods intended to be sold are competitive goods or not;

(ii) Whether the intention to use of infringed trade mark is to trade or cash upon the reputation and goodwill of the Plaintiff earned over the years through extensive advertisement and huge expenses;

(iii) Whether there is likelihood of real or tangible damage or injury to the Plaintiff or reasonable probability if the same would take place. In other words whether use of the trademark by the Defendant is likely to be associated with the Plaintiff’s trade mark or business;

(iv) Whether the hardship suffered by the Plaintiff would be greater than that of the Defendants if injunction is not granted against the Defendants.

The Hon’ble Court granted an injunction by Quia Timet Action and held that the Plaintiff’s apprehension that the Defendants may start manufacturing in the food sector under the same trade name, is a real and tangible possibility and as they will suffer a greater hardship than the Defendants.

Author: Paazal Arora, ILS Law College, Pune