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Judgment
Bibek Chaudhuri, J
The Court : The petitioner no. 1, a registered partnership firm, carries on business under the name and style of 'Shambhunath & Brothers' since 1986. The said partnership firm is engaged in business of manufacturing and marketing electrical fans of all kinds including ceiling fan, table fan, pedestal fan, exhaust fan etc. In or about 1987, the petitioner adopted the trade mark "TOOFAN" in a particular artistic get up and the said trade mark is used on the products packaging materials, brochures, warranty cards, invoices etc. Due to the superior quality of goods under the mark "TOOFAN", the petitioners earned goodwill and reputation in the business. The mark "TOOFAN" is registered under the Trade Mark Act. The petitioners have also obtained registration of their artistic stylized lebel "TOOFAN" under the Copyrights Act. The registration of the trade mark was obtained for manufacturing, distribution and sale of class 11 goods.
It is further stated by the petitioners that from the trade mark journal published on 29th January, 2018, they came to know that the respondent has applied for registration of deceptively similar trade mark "Toofan" in respect of class 11 goods. They also came to know that the defendant had filed an application for registration of trade mark "TOOFAN" in respect of air cooler, apparatus for ventilating etc. The said goods also find in class 11 of the goods under the Trade Mark Act.
On being noticed of impugned trade mark, the petitioners filed a notice of opposition before the competent authority raising objection against registration of identical trade mark "TOOFAN" in respect of the goods of same description falling in class 11.
It is alleged by the petitioners that their registered trade mark "TOOFAN" is infringed by the defendant by using identical mark owned similar class of goods.
Section 28 of the Trade Mark Act empowers the registered proprietor of the trade mark the exclusive right to use the registered trade mark in relation to the goods and services in respect of which the trade mark is registered.
Since the trade mark "TOOFAN" is registered in respect of class 11 goods, manufactured, distributed and sold by the petitioners, no other trader can use the mark deceptively similar to "TOOFAN" in statutory violation of the provisions of the trade mark.
Sub-section 2 of Section 29 of the Trade Mark Act states that a registered trade mark is infringed by person who is, not being a registered proprietor, uses in the course of trade, a mark which because of its identity with the registered trade mark and the similarity of the goods or services covered by such trade mark :...
On comparison of the marks used by the petitioners as well as the defendant and also on due consideration of the class of goods in respect of which the trade mark of the petitioners is infringed, this Court is, prima facie, satisfied that the mark "TOOFAN" used by the defendant is deceptively similar to the marks already registered in favour of the petitioners.
In Laxmikant V. Patel vs. Chetanbhai Shah and Another; reported in (2002) 3 SCC 65, it was held by the Hon'ble Supreme Court that once a case of passing off made out, the practice is generally to grant of prompt ex-parte injunction followed by appointment of local commissioner.
The Division Bench of this Court in Amar Nath Chakraborty -vs- Dutta Bucket Industries & ors; reported in 2005 (30) PTC 496 (Cal) held that once it is established that the label of the defendant is deceptively similar to that of the plaintiff and the plaintiff has been using the label from the earlier point of time, the Court has no other alternative but to grant injunction restraining the defendant from using the said trade mark unless the defendant can show positive act of the plaintiff consenting to use of the trade mark by the defendant.
In the suit for trade mark infringement, if the plaintiff can show that they are the prior users of the mark or that they have acquired a reputation and goodwill in due course of time, the Court must consider such circumstances as factors while deciding where the prima facie case has been made out or not.
In the instant case, the petitioners have been able to establish prima facie that the defendant had been infringed the petitioner's registered trade mark "TOOFAN"; secondly, the petitioners are the prior user of the trade mark; and thirdly, the petitioners have acquired goodwill and reputation in the business in respect of class 11 goods by using registered trade mark thereon. The defendant has been using identical or deceptively similar mark owned the goods classified in class 11 of the goods under Trade Mark Act.
For the reasons stated above, the petitioners are entitled to an ex party ad interim order of injunction in terms of prayer (a) of the notice of motion since refusal to pass any such order would cause irreparable loss and injury to the petitioners. The matter is made returnable on 22nd November, 2019.
The interim order shall continue till 29th November, 2019 or until further orders, whichever is earlier.
The petitioners shall communicate this order along with the copy of the plaint and the application by day after tomorrow by Speed Post with Acknowledgment Due Card and an affidavit of service be filed on the next adjourned date.