Trademark of one used by another as part of business
Where a trademark or tradename of one trader is used as part of the trading style or corporate name of another in a similar business an order may be granted keeping such use of the name. The trademark used any kind of business.
The appellants who were registered users of the respondents registered marks OPTREX for eye lotion, and who were permitted to use the word Optrex as part of their corporate name, on termination of the registered user agreement continued to use Optrex as part of the corporate name. In an action for infringement and passing off, injunction was granted restraining use of the word Optrex as part of corporate name in relation to eye lotions. In respect of other goods the defendants were restrained from using optrex as part of their corporate name in the usual manner on medicines small lettering on one side of the panel of the package/carton or at the foot of the label will not amount to a breach of the injunction.
Trademark used
The plaintiffs were an American Co. Their computers; computer peripherals and software sold under the name ‘Apple’ and a logo containing the device of a cut apple had acquired world wide reputation and goodwill including India. Their goods were also sold in India although they had no place of business there. The defendants adopted the corporate name Apple Leasing and Computers Ltd for their computer business. The plaintiffs objected to the use of the word ‘Apple’ in the defendants corporate name. Later the defendants on their own changed their name to Apple leasing and Industries Ltd. The plaintiffs therefore did not take any further legal action. In course of time the defendants advertised their service, business under the legend “Apple Computer Education”. They also adopted the device cut apple and the letter ‘A’ as part of logo which bore overall similarity to the plaintiffs logo.
In a suit for passing off interim injunction was granted. It was held that the fields of activity of the plaintiffs and the defendants were the same as computer and computer education went hand in hand, the one being complementary to the other and necessary for the existence of the other. The defendants gave no explanation for the use of the word Apple in their trading style and name. The judgement includes a discussion of various passing off cases.
Plaintiffs had been using the mark DOLPHIN in respect of pharmaceutical preparations and as part of their corporate name for a long time and the said mark had acquired reputation and goodwill. Their trademark used was also registered for the same goods. Subsequently the defendants adopted the word DOLPHIN as part of their corporate name Dolphin Organics Ltd and proposed to sell pharmaceutical goods in bulk. They also proposed to raise capital from the market by issue of equity shares. Interim injunction granted restraining the defendant from using Dolphin as part of their corporate name. The defendant proposal to raise money by issue of equity shares under their present name was stayed.
Plaintiffs were manufacturers of a wide range of goods including materials for the building industry, under the trademark UNITEX. The defendants United Ltd were engaged in the business on general building and engineering sub-contracts. No instance of damaging or potentially damaging confusion was forthcoming. The defendants chose the name without knowledge of the plaintiffs mark. Interlocutory injunction was refused as the evidence did not establish any real or tangible risk of damage.
Plaintiffs had established reputation and goodwill for the word KILKENNY in relation to Irish Beer. Defendant’s corporate name contained the words “Kilkenny Brewery” which was incorporated subsequently. The defendant had never traded. It was maintain that there was a real likelihood that public would get an impression of a relation between the business carried on in the defendants premises and the business of the suer. Injunction was granted.
Business different
When the businesses of the petitioner and defendant are different and no injury is done but only an inconvenience caused to suer, it may be hard to manage in an action for passing off. ‘
For many years the abbreviated address “Street, Chennai” was used in sending telegrams from abroad to Street & Co. of Cornhill, the plaintiffs, who carried on the business as advertising agents. Subsequently a bank adopted with the concurrence of the post office the phrase “Street Chennai” as a cypher address for telegrams from abroad to themselves. Injunction was refused as the business of plaintiffs and defendants were different and there was no attempt to interfere with trade, and no legal injury done, but there was only a matter of inconvenience.
The plaintiffs dealt in children’s wear and the defendants in women’s dresses handled by different buyers on behalf of the retailers to whom they were sold. The defendants name did not appear upon the goods when sold retail. They had no intention to trade in children’s clothing although they had power to do so. The trademark must be compulsory for your products or business name.
The plaintiffs were gained in the business of retreading tyres while the defendants were manufacturers and sellers of tyres. Interim injunction refused, the business being different and plaintiff having failed to establish reputation.
The plaintiffs (respondents) under the name “First Computer” was dealing in sales and service of computers manufactured by others. The defendants who were conducting courses in computer training originally under the name Brilliants’ Computer, later changed to “First Computer”. In an action for passing off interim injunction was refused by the division bench on the ground Inter alia that the two businesses were different. The words “First Computer” are purely descriptive terms. No evidence to prove that the words have become distinctive of the plaintiff business. The defendants were however ordered to make it clear wherever they use their trading style that it has nothing to do with the business conducted by the plaintiff. The decision contains discussions of various cases.
A dealer who is stocking and dealing in goods manufactured by different persons cannot display prominently on his signboard, letterheads, cash memos, etc. the tradename of a particular manufacturer.