Trade Mark Infringement | Cal HC restrains use of registered mark prominently used in infringer’s otherwise different packaging

Calcutta High Court: Moushumi Bhattacharya, J. granted an injunction until further orders in favour of registered proprietor of trademark.

In the instant application for infringement and passing off of the petitioners’ registered trademark “GANESH”, it was directed against the respondents who were carrying on a partnership firm in the name of “GANESH DEPARTMENT STORES”.

The complaint was not against the name of the partnership firm but against the use of the mark “GANESH” by the respondents in relation to identical goods.

Counsel contended that the word mark ‘GANESH’ has been protected from infringement by orders of various courts.

Analysis Law and Decision

High Court stated that the first petitioner had been using the word “GANESH” for its goods at least since 1956 when petitioner 1 filed an application for registration of trademark “GANESH”.

Petitioners claimed to use the trademark in respect of the question both in India as well as in countries outside India with voluminous sales, reaching almost Rs 500 crores per annum coupled with advertisement expenses of about Rs 7 crores every year.

The invoices and other documents would show that petitioner 1 has been using the word “GANESH” together with a combination of distinctive packaging for a substantial length of time.

The respondents’ packaging, although different from the petitioners’ packaging or get up, consists of the word “GANESH” which has been rendered in a prominent fashion. The documents also show that the respondents applied for the mark “GANESH” sometime in 2005 but such application was deemed to be abandoned as a result of the respondents not filing the counter-statement.

Long User

Bench in view of the above, stated that there was no doubt that petitioner claimed to have exclusive rights on the trademark “GANESH” by reason of the long user of the said mark by petitioners for specific goods.

Adding to the above, Court stated that petitioners registered the word mark “GANESH” in 2003 and are hence entitled to proprietary use of the said mark for the goods in question.

Since the goods in the present case being used by the respondents were identical, as would be evident from the respondents’ packaging, petitioner 1 is covered by Sections 28 and 29 of The Trade Marks Act, 1999. The respondents have not shown any basis to claim concurrent use of the mark “GANESH”.

Therefore, petitioners established a prima facie case for issue of an injunction in respect of the trademark “GANESH” and are entitled to stop the respondents from using the said trademark for relevant goods until the Court is in a position to consider further facts on affidavits. [Ganesh Grain Ltd. v. Ganesh Department Stores, CS 90 of 2021, decided on 13-08-2021]

Advocates before the Court:

Mr. Ranjan Bachawat, Sr. Adv. Mr. Debnath Ghosh, Adv. Mr. Shaunak Mitra, Adv. Ms. Vaibhavi Pandey, Adv. …for the petitioners

Mr. S. Kumar …for the respondents

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