Delhi High Court: In a trade mark infringement suit filed by the UK based company Raleigh for protecting its mark ‘RALEIGH’, the Single Judge Bench of Prathiba M. Singh, J. restrained the Ludhiana based company from manufacturing cycles, bikes, or any other product under the trade mark ‘RALLIES’.
Plaintiff was in the business of manufacturing and selling bicycles/cycle/bikes and operated a wide range of bike/bicycle brands throughout Europe including ‘RALEIGH’. Plaintiff’s business was founded in 1887 in the name of Raleigh Cycle Co. Ltd. and the mark ‘RALEIGH’was used globally for products like children’s bikes, city bikes, mountain bikes. Plaintiff used the website www.raleigh.co.uk, which was registered in 1998. Plaintiff’s bicycles/cycles/bikes were imported first time in India in 1910 and were sold under the mark ‘SEN-RALEIGH’. Thereafter, the plaintiff commenced the use of the mark ‘RALEIGH’ and its different variations in India in 1939.
In 2012, a distributorship and license agreement was entered between the plaintiff and Naren International, a company in Ludhiana, Punjab for exclusively manufacturing, importing, selling, and distributing ‘RALEIGH’ bicycles products in India. Moreover, the plaintiff’s mark ‘RALEIGH’ was also a registered trademark in India.
Defendants based out of Ludhiana, Punjab were engaged in the manufacturing and selling of bicycles, city bikes, etc. under the mark ‘RALLIES’. A trade mark application was filed by the defendants in 2002 for the word mark ‘RALLIES’ in Class 12 claiming a user since 1999, but the same was rejected. Thereafter, defendants filed trade mark application in Class 12 for bicycles, and their parts including tyres and tubes claiming usage from 1999 and the same was granted registration. Defendants promoted and sold their products on their website www.ralliesbikes.com which was registered in 2020.
Submissions on behalf of the Petitioner:
Plaintiff submitted that the adoption of mark ‘RALLIES’ by the defendants was violative of the plaintiff’s statutory and common law rights as the defendants’ mark was phonetically similar to the plaintiff’s mark ‘RALEIGH’. Further, it was submitted that the defendants were not merely copying the mark but also other attributes such as colour combination used on the bikes, images of the plaintiff’s bicycles and even the plaintiff’s advertisement poster. It was also submitted that defendants were portraying that their bicycles were manufactured in the UK. Therefore, the plaintiff sought an ad-interim injunction as there was confusion between the two marks ‘RALEIGH’ and ‘RALLIES’ and even the business was also identical.
Submissions on behalf of the Respondents:
Counsel for the defendants submitted that the defendants were ready to give up the use of the trade mark ‘RALLIES’ but they would require 18 months to clear the existing stock of ‘RALLIES’. It was also submitted that no bicycles would be manufactured, marketed, or sold by the defendants under the trade name ‘RALLIES’ apart from the existing stock.
Analysis, Law, and Decision
The Court opined that since the defendants had agreed to give up further manufacture and sale of bicycles, motor-bicycles, and part of all such goods, baby carriages, perambulators, sidecars and, trailers under the mark ‘RALLIES’, therefore, the interim injunction would be liable to be granted. Thus, the Court held that the defendants would cease manufacture and advertising in physical shops and through online platforms including e-commerce platforms of all the goods under the mark ‘RALLIES’ or any other mark which was identical or deceptively similar to the plaintiff’s mark ‘RALEIGH’.
The Court granted time till November 2023 to the defendants to dispose of the existing stocks and there should be no fresh manufacture of the products under the mark ‘RALLIES’. Further, the Court also held that defendants should take down their website www.ralliesbikes.com within one week.
The matter would next be listed on 13-12-2022.
[Swiss Bike Vertrjebs GMBH v. Imperial Cycle Mfg. Co., 2022 SCC OnLine Del 4193, decided on 29-11-2022]
Advocates who appeared in this case :
For the Petitioner: Advocate Manisha Singh;
Advocate Abhai Pandey;
Advocate Varun Sharma;
Advocate Gautam Kumar;
Advocate Swati Mittal;
Advocate Aditya Goel;
Advocate Shivani Singh;
For the Respondent(s): Advocate Atul Sharma;
Advocate Sanjay Gupta;
Advocate Abhinav Sharma;
Advocate Ayush Srivastava.