The Battle of Trademarks- the ‘Olympic’ way!!
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Noor Mohamed, Chennai and Anr.
Olympic Prints, Madurai and Ors.
The High Court of Madras delivered a significant judgment emphasizing the need to protect the interest of the party holding and using a registered trademark which is much prior in use.
The brief factual contents of the case are the Plaintiff No.1 is carrying on the business as the sole proprietor under the name and style of Olympia Paper and Stationary Stores. Plaintiff No. 2, Olympic Cards Ltd., is a public limited company and the licensee of the Plaintiff No. 1, who is the Chairman and Managing Director of the Plaintiff No. 2. The Plaintiffs are engaged in the manufacture and marketing of various products like Stationary including wedding cards, visiting cards, invitation cards, greeting cards, inland letters, envelopes, paper and paper articles, cardboard and cardboard articles, books, diaries, etc. being the goods falling under class 16 of the Trademarks Act. The Plaintiff No. 1 is the registered proprietor of the trademarks ‘OLYMPIC’ (word mark), (Device) and (Device of Torch) and has secured statutory protection under the Trademarks Act. The father of Plaintiff No. 1 had adopted and used the aforesaid trademarks in the year 1962 and the said trademark was registered in 1984 and his proprietary concern was subsequently taken over as a partnership firm by his two sons one of which is Plaintiff No. 1. After the death of the other son, the partnership firm was dissolved and in the year 2005 the Plaintiff No. 1 became the sole proprietor of the concern under the name and style of Olympia Paper and Stationery Stores.
The Plaintiffs became aware of the Defendant No. 1’s operation under the name of Olympic Prints and using the identical trademarks as the Plaintiffs in respect of digital and print media, through advertisements made in the magazine named ‘Print Week’ on 10th March, 2014. The Plaintiffs carried out a work search in respect of the trademark ‘OLYMPIC’ and came across a website of the Defendant No. 1 claiming themselves to be a part of ‘Olympic Groups’ wherein the Device of the Torch as registered by the Plaintiffs has been used and exploited by Defendant No. 1 and its group which amounts to infringement of the Plaintiff’s marks. The Plaintiffs came to know through their search that the Defendants have only applied for the registration of the mark ‘Olympic Prints’ in classes 16 and 35 in 2012 and 2013 respectively. The Plaintiffs then filed a suit of infringement to grant permanent injunction against the Defendants restraining them to use the identical mark registered in the Plaintiffs.
Apart from the main issue of the suit, the Hon’ble High Court also discussed the other issues surrounding the main issue:
(i) Whether the Plaintiffs have made out a prima facie case for grant of interim relief as sought for in their applications?
(ii) Whether the balance of convenience is in favour of the Plaintiffs?
(iii) Whether irreparable injury would be caused to them, if the injunction is refused?
These issues were dealt in depth and argued at length by both the Counsels. The Counsel appearing on behalf of the Plaintiffs argued that the Plaintiffs being the prior users of the trademarks ‘Olympic Device’ with a device of Torch in the label, since 1962 deserves protection under the statutory law. The Defendants have dishonestly and fraudulently adopted the impugned mark ‘Olympic Prints’ having prior knowledge of the Plaintiff’s existence and are claiming the user rights from 2009 and 2010. The Plaintiffs immediately took legal action upon the knowledge of this fraudulent act of the Defendants. The Ld. Counsel also mentioned that the Plaintiffs have acquired a status of well-known trademark under the provisions of the Trademarks Act, 1999 and the Defendant’s mark ‘Olympic Prints’ is identical to the well-known and registered trademark of the Plaintiffs. The Ld. Counsel cited many judgments amongst which he relied on the decision of the Hon’ble Supreme Court in the case Dhariwal Industries Ltd. & Anr. v. M.S.S. Food Products [2005 (30) PTC 233] wherein it was observed that the earlier user of the trade mark is entitled to an injunction and the decision of the case Parle Products (P) Ltd. v. J.P. and Co., Mysore [ PTC (Suppl.) (1) 346] wherein it was held by the Hon’ble Court that while assessing the two marks, it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other offered to him.
The Counsel appearing on behalf of the Defendants argued that the their trademark ‘Olympic Prints’ was bonafidely conceived and adopted by the Defendant No. 1 in the year 2010 which is represented in a distinctive capable of distinguishing the services rendered by the Defendant No. 1 and therefore there is no possibility of confusion in the minds of public. The Defendants and the Plaintiffs marks are visually, phonetically and structurally or deceptively similar. The Plaintiffs have not made any prima facie case or established balance of convenience in their favour. Further, the Ld. Counsel also pointed out that the goods manufactured by the Defendants are different and not same as that of the Plaintiffs. Moreover, the goods manufactured by the Defendants under the impugned mark are not for selling to common man, on the other hand, it is meant for selling to the class of customers, namely, printers. Therefore, there is no possibility of any confusion in the minds of public. The Plaintiffs have the knowledge of the use of the Defendant’s mark since 2009 therefore the case is hit by delay and latches. Additionally, the Defendants are not doing the business in Chennai which fact has been totally neglected by the Plaintiffs. Thus the Plaintiffs cannot claim any exclusive rights over the word ‘Olympic’.
The Hon’ble High Court held that the Plaintiffs have made out a prima facie case for grant of interim relief as sought for in the interim applications. For this purpose, the Court observed that it is to be seen that the present Plaintiffs have come before this Court immediately on knowing the infringement of their trademark and this contention was not specifically denied by the Defendants except making vague statements of Plaintiffs having knowledge of the Defendant’s mark since 2009, without any documentary proof. The Hon’ble Court further held that the word ‘OLYMPIC’ is a registered trademark of the Plaintiffs therefore, cannot be used by any other person and if there is any such use, certainly, it would amount to infringement of the said registered word mark. The Court also held that the Plaintiffs have established a strong prima facie case in their favour by showing that they are in trade using the trade mark for more than 5 decades and are doing good business running to crores of rupees every year. The Court also held that if no injunction is granted, it would certainly cause irreparable injury to the Plaintiffs as their registered trademarks are being used by the Defendants which would be construes as though the Defendants’ trademark is that of the Plaintiffs’. The Court set a ratio decidendi that the Court should protect the interest of the party who is holding and using such registered trademark much prior in point of time, that too, for long number of years.
The above judgment passed by the court concluded the fact that in every case of infringement, grant of interim injunction on the unauthorized use of the mark is necessary to avoid the damages being caused to the prior registered user of the mark.
MIPR 2015 (3) 0274
Contributed By : Ferzin Daboo (Advocate)
Designed By : Vikash Singh