IN THE HIGH COURT OF MADRAS
CASE NO. 259 OF 2017
Background
The plaintiff, a distinguished primary producer and seller of food items, incense sticks, and other goods, has been a prominent figure in the market. In 1948, the predecessor of the plaintiff founded the business with the intention of producing and distributing Dhoops and incense sticks, also known as Agarbathies as their flawless technique of mixing scents and perfumes. As the company quickly grew, its goods, sold under the brand name “CYCLE”, developed a significant brand value, with excellence and reliability gathering a great deal of goodwill, and a positive reputation throughout the nation, public, and among consumers. In 1954, Ranga Rao registered the brand name “Cycle”, and makes them the sole and exclusive owner of the trademark, they used the same trademarks publicly and constantly in a variety of items, from food to cosmetics which will further and over time get extended by them. The brand “CYCLE” contains an oval-shaped logo with a distinguishing characteristic that houses a gadget in an artistic work that is both unique and distinctive. The plaintiff holds the valid trademark registration of hair oil, cooked fruits, vegetables, jellies, etc. While the defendant has been manufacturing edible vegetable oils, which is neither elite nor cognate to the plaintiff’s goods under the trademark “CYCLE”, since 2009, and the defendant has been using identical and similar trademark “CYCLE” for their goods that fall under Class 29 or 30 of Trademark Rules. Prior to the defendant, the plaintiff was running a successful company under the name “CYCLE”. As a result of the defendant’s activities, the plaintiff incurred a significant loss, also their rights were violated and caused confusion and deception of the products among the public or consumers.
Issues
- Whether the defendant’s use of the trademark harmful to the plaintiff’s trademarks or is it creating deception or confusion?
- Whether the defendant’s edible product and the plaintiff’s product are cognate and allied as the same product?
Section in question
- Section 28 of Trademark Act,1999
- Section 29 of Trademark Act,1999
Cases Referred
Blue Hill Logistics Private Limited v. Ashok Leyland Ltd.
JSB Cement LLP v. Assam Roofing Limited
Mahindra and Mahindra Paper Mills Limited v. Mahindra and Mahindra Limited
Analysis
- The plaintiffs filed the lawsuit on three grounds:
- (i) The plaintiff is the only owner of the registered trademark cycle,
- (ii)the plaintiff has been using the mark since 1948,
- (iii)and the plaintiff’s mark is well-known across India.
They also said that the brand became well-known even to those who lived in the most distant areas of the nation by hosting and planning specific events in the sport. therefore, people are purchasing the products based on the company’s reputation, which is established by its trademark. Additionally, they claimed that the defendant used the same trademark for identical products that it had originally adopted and then used it for items that were not related to the goods which amounted to infringement of their rights and demands for permanent injunction which was held in the Blue Hills Logistics Pvt Ltd v. Ashok Leyland Ltd and Ors
- In response to the plaintiff’s arguments, the defendant claims that the plaintiff’s business registered a trademark for hair oil, and other food items and not in the trade of edible oil and that the defendant company’s goods are not related to the plaintiff company’s product. The defendant firm is utilizing this trademark for edible oil. They adopted the trademark “CYCLE” after due research and refer to the case of JSB Cement LLP v. Assam Roofing Limited, in which it was held that Section 29 (2) and Section 29 (4) are mutually exclusive.
- While section 28 (1) grants the trademark holder monopoly rights over the goods or services for which the trademark is registered and obtains relief in case of infringement, section 28 grants monopoly rights over the respect class for which the trademark is registered, as noted by the Madras High Court in this case. Relying on the plaintiff’s evidence the court determines that because the plaintiff did not have a trademark in edible oils and the reputation of the company is built by incense sticks, thus there is no infringement by the defendant under section 29 (2) and 29 (4).
- The court further noted that although the word “cycle” is widely used and can be used arbitrarily, the plaintiff’s trademark is distinctive due to the way it combines other words with the word “cycle,” such as “cycle brand “agarbattis” and “cycle pure agarbatti,” which place particular emphasis on the second term that combines with “cycle.” As a result, the company’s reputation has not been built via the term “cycle”.
Court Decision
The Madras High Court stated the judgment by referring to a case Mahendra and Mahendra Paper Mills Limited v. Mahindra and Mahindra Limited in this case the Supreme Court stated that Mahindra and Mahindra Limited is a well-reputed company and has a vast reputation. Therefore, this led to infringement of the rights. But in this case, the defendant company has been using the trademark name “cycle” for more than eight years thus there is no such harming of reputation to the plaintiff due to none of the products of the plaintiff is allied or cognate to edibles sold by the plaintiff because the trademark of the plaintiff is mostly concerned with the incense sticks which is an external product and edible oil is an internal product. Thus, the defendant can use the trademark of the cycle for their edible products and there is no infringement of rights of the plaintiff.
Conclusion
This case is a perfect example to understand trademark infringement in Copyright. Despite the fact that the plaintiff, CYCLE, is a well-known brand having significant goodwill, the court ruled in favor of the defendant for the use of the same trademark for edible oil, the plaintiff stating that primary products (incense sticks, food items) of CYCLE and the defendant’s edible oil are distinct, and because edible oil falls under a different class under Section 29 than CYCLE’s existing offerings, the potential for confusion was very minimal. The court noted that the plaintiffs were well-known for incense sticks rather than for food. If CYCLE had registered edible oil, it would have constituted infringement. The court said that granting exclusive rights to CYCLE would be detrimental to the public interest and could cause harm to competition. This case focuses on difficulties caused by generic words used across a wide range of product categories. For protection, this case shows the importance of registration and developing brand recognition within specified classes. In addition, the case also creates a balance of existing trademark rights with the public interest and supports fair competition.
