Mars
Incorporation v. Kumar Krishna Mukherjee & Ors
2003 (26) PTC 60 (Del)
Delhi High Court
Source:BarandBench
Brief Facts
Plaintiff
was a proprietor for the ‘Mars’ trademark which was registered in India and
additionally in 170 countries more. They are into a business of manufacturing
of chocolates, confectioner, preserved food products and another foodstuff in
India. The plaintiff was established in USA way back in 1911 as ‘Mars’ and
trademark it in 1923. It came in India in 1942 and got its logo registered in
1985.
The
defendant (Krishna Kumar Mukherjee) incorporated a company under the name of
Mars Food Pvt. Ltd. and thereby the plaintiff came into action. Nether the
defendant hadn’t started the production nor commenced the sale of goods, but
the intention of the company was clear with the object clause of staring
business in bakery and food items etc. The suit for permanent injunction was
instituted which was a Quia Timet Action suit. Because it was loss of goodwill
and reputation of the ‘Mars’ brand of the plaintiff. Therefore, the defendant
was issued summons but, they choose not to appear before the court of law.
Provisions
Section
28 of the Trade and Merchandise Marks Act, 1958 protects the right against the
infringement of a trademark of a registered proprietor. And section 29 of the
said Act protects the rights of a person who is not even a registered proprietor
but on the basis that such person be using the
trademark prior and over a long period of time if there is an
infringement of a similar by use of trademark. Hence there would be no
difficulty in injunction directly or by way passing off, if the defendant is
found guilty.
Issue Before the Delhi High Court
Whether
the plaintiff is entitled to file a suit against the defendant for the who had
incorporated the company with the similar brand name and whether the word
‘Mars’ incorporated by the defendant into their brand name entitle the
plaintiff to brought Quia Timet Action or not.
Contentions on Behalf of The Plaintiff
· Learned
counsel for plaintiff was Mr. Praveen Anand, who argued that as the part of
their corporate name and trading style is clearly is dishonest because they
already had the pre-existing knowledge of the plaintiff’s statuary right as the
registration of trade mark is a matter public record.
· That
the trademark ‘Mars’, holds the goodwill and reputation in India to the
plaintiff’s firm and therefore the defendant’s object is malafide of adopting
the same trademarks and to en-cash upon that reputation and goodwill built by
the plaintiff over a period of time. Huge amount of time and money was spent to
make this goodwill by the plaintiff.
· The
defendant had used the name in the business of food items, which already made
its name in that market. There is also real and tangible possibility that the
plaintiff would start the business in this market soon in future as at the time
of incorporation, the object clause of the memorandum had been stated likewise
that. The defendant wanted to sway away the customers of the plaintiff by way
of deceiving.
Contentions on Behalf of The Defendants
· The
defendant argued that he had only adopted the trademark as the corporate name
and trading style of the plaintiffs.
· The
company of the defendant had not started any business, it is merely a company
on paper. There is nether Manufacturing took place nor have they filed any
annual returns or other mandatory documents.
Observations Made by The Delhi High Court
Justice J. Kapoor (Single Judge Bench), looked at the precedent Direct Line Group Ltd and Ors v. Direct Line Estate Agency Ltd and Ors. and Marks and Spencer v. One in a Million Ltd and Ors. (1998), which said that if the threatened act of the defendant is imminent and impending then one does not have to wait for the consummation of the threatened injury to avail relief from the court. Therefore, for the aggrieved party (plaintiff) to wait and watch the defendant party to start their business is too much and their right should be safeguarded beforehand.
"A stich in time always saves nine and that is what the
essence of Quia Timet Action is."
The
Hon’ble Court held that the party who is under the threat of the infringement
of their right shall not be left remediless, merely for he reason that the
materialization of the threat has not taken place which would damage the
reputation and goodwill of the plaintiff. Therefore, an injunction by Quia
Timet Action should be granted because otherwise there is probability that the
damage suffered by the plaintiff would be greater than that of the defendants.
The
defendants were restrained themselves and their officers, servants, agents,
representatives, distributors and assigns from
(1)
passing off their business as and for that of the plaintiff trademark as a
corporate name or trading style or indicating any other connection during
trade.
(2)
and, from entering into the market with the same trademark which is deceptively
or confusingly like that of ‘Mars’.
The Only Test for Injunctive Relief in Quia Timet Action Are
‘Guia
timet’ means ‘because he fears’, so thereby it is an injunction to prevent any
future injury to occur. It is a Latin word. In legal terminology it is defined
in Osborne’s Concise Law Dictionary as an action of injunction bought in by the
plaintiff looking at the substantial damage in the future.
· Whether
there is likeliness of causing confusion or to deceive the proprietor, as the
goods would be sold in the future with the same trademark and irrespective of
the fact that the goods are sold or not in the present.
· Whether the intention of the perpetrator is to en-cash the goodwill and reputation of the proprietor who earned it over years
of hardships.
· Whether there is possibility of real and
tangible damage to the proprietor.
· And
that whether the hardship suffered by the proprietor would be greater than that
of the defendants.
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