Rpg Enterprises Limited vs R.Paramaguru

S.

No.",Trade Mark,"App. /

Reg. No.",Class,"Date of

Application",Page No.

1.,,2083063,05,11/01/2011,183

2.,RPG Life,2409620,05,11/10/2012,185

3.,RPG Life Sciences,2409621,05,11/10/2012,187

4.,RPG Pharmaceuticals,2409622,05,11/10/2012,189

5.,"RPG LIFE SCIENCES

LIMITED",2409623,05,11/10/2012,191

6.,,3549247,05,15/05/2017,193

7.,,3549248,05,15/05/2017,195

8.,"RPG LIFE SCIENCES

DIRECT",3571200,05,15/06/2017,197

9.,"RPG LIFE SCIENCES

GENERIC",3571201,05,15/06/2017,198

10.,"RPG LIFE SCIENCES

GENERIC PLUS",3571202,05,15/06/2017,199

11.,"RPG LIFE SCIENCES

PLUS",3571203,05,15/06/2017,200

12.,"RPG LIFE SCIENCES

CARE",3571204,05,15/06/2017,201

13.,,851098,09,13/04/1999,204

14.,,2083064,09,11/01/2011,-

15.,,850255,12,08/04/1999,202

16.,,850256,16,08/04/1999,203

17.,,2083065,30,11/01/2011,206

Applicant’s famous RPG Marks,Resp. No. 1’s impugned mark,,,,

RPG

/

Â",,,,,

The points of similarity highlighted by the Applicant were-

Identical word mark- RPG",,,,,

The following judgments were relied on by the Counsel for the Applicant:,,,,,

i. In KSB Aktiengesellschaft and Ors. Vs. KSB Global Limited, 2011(45)PTC 103(Del), Applicant relied on the Hon’ble Court’s observations",,,,,

as under-,,,,,

“12.1 The defence taken by the Defendant that 'KSB' is a derivative of a family name, assuming that to be true, the same is untenable. This for the",,,,,

reason that the plaintiffs' trade mark 'KSB' has gained both in India, and in several countries across the world, a reputation. The annual sales turnover",,,,,

of the 'KSB' even in 1995 was several Rs 100 crores. Therefore, the Defendant's use of the mark 'KSB' cannot be permitted as it is bound to create a",,,,,

confusion in the minds of the trading community as well as its customers. The products of the plaintiffs are used; amongst others, by agriculturists. At",,,,,

least a significant section of its customers are bound to associate the goods supplied by the Defendant as those originating from the plaintiffs. The,,,,,

argument of the learned Counsel for the Defendant that it is the partnership firm which is in the business of selling pipes and fittings, and, therefore, no",,,,,

case can be made out against the Defendant, is a contention which will have to be rejected, in the facts and circumstances of this case; for the reason",,,,,

that: the Defendant's own pleadings and the evidence placed on record clearly demonstrate that the line of demarcation of business between the two,,,,,

is completely blurred. The submission of the learned Counsel for the Defendant that Section 35 of the Trade Marks Act permits the Defendant to use,,,,,

its family name, which includes any abbreviation of a name, as part of its business, will have to be rejected in this particular case, as the evidence on",,,,,

record demonstrates that the conditions stipulated therein that the use of the name has to be bona fide is not established in the instant case. I am,",,,,,

however, not in agreement with the submission of the learned Counsel for the plaintiff that the defence under Section 35 of the Trade Mark is",,,,,

restricted only to individuals and that a juristic entity cannot take resort to the provisions of Section 35 of the Trade Marks Act. There are no such,,,,,

limitation in Section 35 of the Trade Marks Act.â€​,,,,,

ii. In the case of Larsen and Toubro Limited Vs. LachmiNarain Trades and Ors., 2008(36)PTC 223(Del), Applicant relied on the Hon’ble",,,,,

Court’s observations as under--,,,,,

“12 As rightly held by the learned Single Judge the test of 'field of activity' is no more valid. The question really is one of real likelihood of,,,,,

confusion or deception among the consumers and the resultant damage to the plaintiff. The legal position on the subject is fairly well settled by a long,,,,,

line of decisions rendered by this Court as also the Apex Court.â€​ (underline added),,,,,

iii. In DPS World Foundation and Ors. Vs. Delhi Public School Society, FAO (OS) (Comm.) 21/2016- MANU/DE/0924/2017, the Hon’ble",,,,,

Division Bench of Delhi High Court, confirmed the injunction order passed by the Ld. Single Judge restraining the Defendants from using the mark",,,,,

‘DPS World Foundation’ for educational services/ schools, as the Defendant’s mark ‘DPS World Foundation’ incorporated the",,,,,

Appellant/ Plaintiff’s trademark ‘DPS’.,,,,,

iv. In the case of Honda Motors Co. Ltd. Vs. Mr. Charanjit Singh and Ors., 2003(26)PTC1(Del), the Hon’ble Delhi High Court restrained the",,,,,

Defendants from using the mark HONDA in respect of the different goods namely pressure cookers, and Applicant relied on the Hon’ble",,,,,

Court’s observations as under--,,,,,

“43. As observed above, the concept of passing off is a tort and with the passage of time, with the developing case law it has changed and now the",,,,,

two traders need not necessarily operate in the same field so as to suffer injury on account of the goods of one trader being passed off as those of the,,,,,

other.,,,,,

With the changed concept of passing off action, it is now not material for apassing off action that the plaintiff and the defendant should trade in the",,,,,

same field.I find that some business are truly international in character and the reputation andgoodwill attached to them cannot in fact be held being,,,,,

international also. Theplaintiff's business is of international character and obviously the reputation andgoodwill attached to its trade mark HONDA is,,,,,

also of international repute. Theplaintiff's trade mark HONDA, which is of global repute, is used by the defendantsfor a product like pressure cooker,",,,,,

to acquire the benefit of its goodwill andreputation so as to create deception for the public who are likely to buy defendant'sproduct believing the same,,,,,

as coming from the house of HONDA or associated withthe plaintiff in some manner. By doing so, it would dilute the goodwill and reputationof the",,,,,

plaintiff and the wrong committed by the defendants would certainly be anactionable wrong and the plaintiff is within its rights to ask for restraint,,,,,

against thedefendants from using its mark HONDA for their products.â€​,,,,,

v. In the case of Sony Kabushiki Kaisha Vs. Mahaluxmi Textile Mills, 2009(41)PTC 184(Cal), the Hon’ble Full Bench of Calcutta High Court",,,,,

held that the similarity of the goods of the rival traders is not an essential requisite for maintaining an action for passing off and Applicant relied on the,,,,,

Hon’ble Court’s observations as under--,,,,,

“15. From these authorities, it is apparent that similarity of the goods of the rival traders is not an essential requisite for maintaining an action for",,,,,

passing off. In the case of Mahendra&Mahendra Paper Mills Ltd., the defence of dissimilarity in the field of operation was taken. This argument was",,,,,

not accepted, and it was held by the Hon'ble Supreme Court:",,,,,

Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using",,,,,

the word ""Mahindra"" and ""Mahindra & Mahindra"" in its companies/business concerns for a long span of time extending over five decades. The name",,,,,

has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a,,,,,

certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will,,,,,

create an impression of a connection with the plaintiffs' group of companies. Such user may also effect the plaintiff prejudicially in its business and,,,,,

trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing off' action against the defendant will be accepted or not has to be",,,,,

decided by the Court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is,,,,,

intended for maintenance of status quo, the trial Court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its",,,,,

favour which calls for passing an order of interim injunction restraining the defendant company which is yet to commence its business from utilising,,,,,

the name of 'Mahendra' or 'Mahendra&Mahendra' for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot",,,,,

be faulted for confirming the order of injunction passed by the learned Single Judge.â€​,,,,,

vi. In the case of FDC LIMITED Vs. DOCSUGGEST HEALTHCARE SERVICES PVT. LTD. & ANR., 2017(69) PTC 218, the Plaintiff was",,,,,

using the registered mark `Zifi' for goods falling under Class 05 of the Schedule of the Act i.e. pertaining to pharmaceutical preparations. On the other,,,,,

hand, the Defendants were using the mark `Ziffi' for booking of appointments for doctors, diagnostics, spas and salons, and applied for registration",,,,,

under Class 35 and 42 of the Schedule of the Act. It was the submission of the defendant that goods and services falling under different classes,,,,,

cannot be allied and cognate. The Delhi High Court rejected the submissions of the Defendants and held that the classification of goods and services,,,,,

under Section 7 of the Act is not the criterion for deciding the question of similarity in goods/services (Para 48).The Court found that the Plaintiff's,,,,,

goods are similar to and associated with the defendants' services and restrained the Defendants from using the mark ‘Ziffi’.,,,,,

vii. In the case of Allied Auto Accessories Ltd. Vs. Allied Motors Pvt. Ltd. and Ors., 2003(27)PTC 115(Bom), the Hon’ble High Court of",,,,,

Bombay observed that guidelines or classification lists which are published by the Trade Marks Registry are only administrative guidelines.,,,,,

viii. Reliance was placed on the judgement of Hon’bleDelhi High Court in Suresh Kumar Jain Vs. Union of India and Ors., 2012(49)PTC",,,,,

287(Del) â€" Para- 3 & 4,andVivekKochher and Ors. Vs. KYK Corporation Ltd. and Ors., 2018(74)PTC 120(Del)- Para-18, 19 and 20.",,,,,

COMPARISON OF THE MARKS,,,,,

We have examined the Impugned Trade Mark  and find that the impugned mark is deceptively similar to the Applicant’s RPG,,,,,

trademark and various other trademarks of the Applicant containing RPG. The impugned mark, therefore, cannot qualify for protection as a trademark",,,,,

under any circumstances as members of the trade and public would invariably associate the same with the Applicant. Thus the impugned mark is,,,,,

incapable of distinguishing the Respondent No.1’s goods from those of the Applicant.,,,,,

INTENTION OF THE RESPONDENT,,,,,

It is seen that the goods offered by Respondent No-1 under said deceptively similar impugned trade mark are also allied goods to that of the,,,,,

Applicant. The behavior of the Respondent No-1 is having copied various elements of the Applicant’s marks, including the phonetic element RPG",,,,,

and the visual element of the bird in flight, and combining them, evinces that they had deliberately and fraudulently adopted the impugned mark in",,,,,

respect of similar and allied goods and has applied for registration thereof, in order to establish a connection between the impugned marks and the",,,,,

Applicant’s goodwill and reputation, and having full prior knowledge about Applicant’s exclusive proprietorship over the RPG series of",,,,,

trademarks and the reputation and goodwill attached to the Applicant’s marks. The impugned mark has been used on similar and allied goods in a,,,,,

manner so as to evince malafide on the part of the Respondent No.1.,,,,,

FINDINGS,,,,,

We understand that the Applicant is an Indian business conglomerate, operating in diverse business sectors. Applicant has generated extensive",,,,,

sales for its products and services under the trademark/ trade name RPG, which is evident from the fact that for the year 2017 itself, the",,,,,

Applicant’s sales were Rs. 22,000 crores. It has also been exporting its products to other countries. Today, the Applicant’s trademark/ trade",,,,,

name RPG has acquired extensive goodwill and reputation in India and also, in other countries. By virtue of the same, the trademark/ trade name RPG",,,,,

is associated with the Applicant and the business or products under the trade mark/ trade name RPG has acquired such goodwill and reputation that it,,,,,

has become distinctive of its products/ services.,,,,,

We find that the impugned mark is deceptively similar to the Applicant’s prior used and registered RPG trademark and various other,,,,,

trademarks containing RPG. As was observed by Parker, J., in Re Pianotist Co.'s Application, (1906) 23 RPC 774, and further expanded on in a",,,,,

plethora of subsequent cases including Roche & Co. v. Manners & Co. (P) Ltd., AIR 1970 SC 2062, Parle Products v. J P & Co. AIR 1972 SC",,,,,

1359, and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [2001 CLC 564 the Apex Court has observed that it must be seen whether there",,,,,

was an overall similarity between the two names in respect of the same description of goods, both visually as well as phonetically. Mere use of the",,,,,

terms ‘Express Parcel’ will not make the impugned mark dissimilar from that of the Applicant since ‘RPG’ is the prominent and,,,,,

distinctive portion of the impugned mark, and the term ‘Express Parcel’ merely describes the services covered under the impugned mark and",,,,,

has no trade mark value. In this regard, the reliance is placed on Ruston and Hornsby Ltd. Vs. Zamindara Engineering Co., 1970 AIR(SC) 1649,",,,,,

wherein the Defendant was using the mark ‘RUSTAM INDIA’ and the Hon’ble Supreme Court of India observed that- “8 If the,,,,,

respondent's trade mark is deceptively similar to that of the appellant the fact that the word 'INDIA' is added to the respondent's trade mark is of no,,,,,

consequence and the appellant is entitled to succeed in its action for infringement of its trade mark.†This was also relied on in Greaves Cotton,,,,,

Limited V. Mohammad Rafi &ors, 2011 (46) PTC 466 (Del.)",,,,,

Further the Hon’ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra, [2002 2 SCC 147] laid out certain",,,,,

guidelines on deceptive similarity resulting in infringement by capitalizing on the goodwill and reputation of the original trader. This was relied on in a,,,,,

plethora of decisions including Standard Electricals Limited vs Rocket Electricals And Anr. 2004 (28) PTC 26 Del. In the present case, the",,,,,

Respondent No.1’s mark is deceptively similar to the trademarks of the Applicant.,,,,,

The concept of well known mark, first elaborated on in cases such as Daimler Benz Aktiengesellschaft & Anr v. Hybo Hindustan, AIR 1994 Del",,,,,

2369 and was further expanded in Kamal Trading Co., Bombay and Others v. Gillette U.K. Limited, Middle Sex, England, 1998 PTC 288 DB,",,,,,

Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietory Ltd., AIR 1996 Bom. 146 and a plethora of subsequent decisions. We have also declared",,,,,

vide our judgement in TA/1/2007/TM/DEL/(C.M.(M)) No. 148 of 2002) dt. 11/12/2009 that KIT KAT is a well-known mark having trans-border,,,,,

reputation. Further we also recognised the trans-border reputation enjoyed by the mark WOOLWORTH 2004 (29) PTC 477. Other marks we have,,,,,

declared well known are AMUL (OA/56/2011/TM/KOL), RAYMOND (OA/16-17/2010/TM/CH), SONY (OA/49/2007/TM/KOL), ENFIELD",,,,,

BULLET (2006(32) PTC 397), LETTER*T IN A CIRCLE (2006 (32) PTC 296), NIRMA for washing & cleaning preparations (2004(29) PTC 634),",,,,,

USHA For sewing machines, electric fans etc. (2004(29) PTC 647), Canon (Order in OA/43/2005). The RPG trade mark of the Applicant is well",,,,,

known to the public at large in India. It is an Indian industrial and services conglomerate with a long duration, extent and geographical area of usage of",,,,,

the aid trademark. The Applicant’s mark is in use for four decades. The name has acquired a distinctive secondary meaning in the business or,,,,,

trade circles. The Applicant’s trade mark RPG therefore qualifies as well known under Sec. 11(10) of TM Act 1999. In Kirloskar Diesel Recon,,,,,

Pvt. Ltd. vs Kirloskar Proprietary Ltd., AIR 1996 Bom 149, the Court while extending protection to the mark ‘Kirloskar’ stated that â€"“in",,,,,

case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a passing off",,,,,

can successfully lie if the defendant has adopted identical or similar trading name and even when the defendant does not carry on similar activity.,,,,,

Even if the defendant’s activities in such circumstances, are remote, the same are likely to be presumed a possible extension of plaintiff’s",,,,,

business or activities. In the instant case, the Respondents have established that word ‘Kirloskar’ has become a household word and their",,,,,

businesses cover variety of activities and that there is even a common connection with some activities of the Respondents and activities of the,,,,,

Appellants.†We note that the services covered under the impugned marks (namely Parcel delivery services; transportation of parcels overnight;,,,,,

courier services for the delivery of parcels) are similar and/ or cognate to the Applicant’s goods covered under Registration No. 850256 for the,,,,,

mark  in class 16. Even otherwise, the Petitioner’s RPG Marks are liable to be entitled to be protected across classes",,,,,

being a well-known trademark. Hence, any use of the impugned mark ‘RPG Express Parcel’ in respect of “Parcel delivery services;",,,,,

transportation of parcels overnight; courier services for the delivery of parcels†tends to mislead the public to believe that the Respondent No.,,,,,

1’s business and services are that of the Applicant. Such user by the Respondent No. 1 will also dilute and debase the goodwill and reputation of,,,,,

the Applicant in its RPG Marks.,,,,,

Also, the Respondent No. 1 has not contested the present matter by filing its counter-statement and the evidence to support its use date of",,,,,

14/04/2014 made in the impugned registration. Given the long and extensive use and promotional initiatives undertaken by the Applicant worldwide, it",,,,,

is incomprehensible that the Respondent No.1 was unaware of the prior use, registrations, goodwill and reputation of the Applicant’s RPG",,,,,

trademarks. Thus the adoption of the impugned mark by the Respondent No.1 for conflicting goods is dishonest, fraudulent and solely motivated to",,,,,

encash upon the goodwill attached to the above trademarks of the Applicant. It is likely to create an unmistakable impression in the minds of,,,,,

consumers that the services offered by the Respondent No.1 are somehow associated with the Applicant. Considering that the use of the impugned,,,,,

mark, if any, was illegitimate, there is no acquired distinctiveness which has accrued in favour of the respondent No.1 and hence, no protection is",,,,,

available to the said registration under the provision of Section 32 of the Act.,,,,,

The conduct of the Respondent No.1 shows that they have not come with clean hands in seeking the registration of the impugned Trade Mark and,,,,,

therefore, the application of the impugned trade mark should be regarded as having been made in “bad faithâ€. The impugned registered trade",,,,,

mark is therefore, liable to be cancelled under the provisions of Section 11 & 18 of the Act. It also offends under Section 57 of the Act. The existence",,,,,

of the identical/nearly identical impugned registration which was wrongly granted is prejudicial to the Applicant’s interests.,,,,,

The RPG trademarks is being used by the Applicant in India since the year 2001 and worldwide since 1979 and due to such long, continuous and",,,,,

extensive use, the mark is associated solely with the Applicant and none else. No other trader can therefore register the mark in their name. The",,,,,

registration of the mark in the name of Respondent No. 1 should therefore have been refused by the Respondent No. 2 as the same is against the law,,,,,

of passing-off.,,,,,

In view of facts and material placed on record, it is evident that the registration of the impugned trade mark has been wrongly granted by the",,,,,

Respondent No. 2 and should be removed from the register as it is in breach of provisions of 9(1)(a), 9(2)(a), 11(1), 11(2), 11(3), 11(10), 12, 18(1) and",,,,,

32 of the Trade Marks Act and therefore is liable to be removed and cancelled from the Register under Section 57 (2) of the Trade Marks Act, 1999.",,,,,

Respondent No.1 has not appeared in this matter. It appears that Respondent No.1 is not interested to contest the matter. The Respondent No.1 is,,,,,

not the proprietor of the trade mark. User, if any, was tainted and dishonest. Thus the mark is wrongly remaining on the Register and is liable to be",,,,,

removed.,,,,,

In the light of above the Petition is allowed and Respondent No.2 is directed to delete the entry of registered Trade mark No. 3399076 for the,,,,,

mark “ â€in class 39 in the name of R.PARAMAGURU TRADING AS: M/S. RPG EXPRESS PARCEL from the Register under the,,,,,

provisions of Section,,,,,

47(1)(a) and (b) and Section 57 of the Trade Marks Act, 1999. Copy of order be sent to the parties as well as Respondent No.2 who is directed to",,,,,

remove the said mark from the Register forthwith 33. No costs.,,,,,