Bombay High Court: In a suit filed by the plaintiff seeking interim relief in connection with its registered trademark Griffon Laboratories Private Limited alleging infringement and passing off, Manish Pitale, J., temporarily restrained the defendants from using in any manner the trademark and/or the word GRIFFON and/or GRIFF or any mark deceptively like the trademarks or trade names GRIFFON Laboratories Pvt. Ltd.
The Court noted that the registration certificate issued in favour of the plaintiff indicates that “Griffon” is the most prominent and essential feature of the registered trademark of the plaintiff and the material placed on record indicates that the name Griffon was adopted in the year 1973 and that the plaintiff has been operating in the market of pharmaceutical products for a considerable period, beginning in the year 1970’s. The registration of the trademark of the plaintiff dates to the year 1978. However, the defendant came into existence sometime in the year 2018 and it claims to be manufacturing and selling ayurvedic medicinal products since then.
On the contention by the defendant that since Griffon is a descriptive term pertaining to a legendary creature of mythological origin in the literature of countries like Greece, Iran, and Egypt and it refers to a mythological creature having body, tail and back legs of a lion and the head and wings of an eagle, the plaintiff cannot claim any exclusivity in the said word, the Court noted that the word Griffon, although it may signify a mythological creature with origin in countries like Greece, Iran and Egypt, it is not a common word or name in India.
On the contention by the defendant the plaintiff has registration for the mark “Griffon Laboratories Private Limited”, the defendant is using a different mark i.e., “Griffon Biometrix Pvt. Ltd.”, the Court negated the contention and opined that the registration certificate issued in favor of the plaintiff shows device mark, label mark and the word mark of which the word Griffon is the most prominent and essential feature.
The Court concluded that merely the use of the word Biometrix with the word Griffon cannot justify the defendant’s claim that there is a clear distinction between the two marks. An overall impression created by comparison of the two marks shows that prima facie the corporate name and trademark being used by the defendant is like the registered trademark of the plaintiff.
Thus, the Court held that the use of the word Griffon and part of the word i.e., ‘Griff’ by the defendant as well as the most prominent and essential feature of the registered trademark of the plaintiff being used in the impugned products and the impugned marks used by the defendant amount to infringement and passing off, respectively, of the registered mark of the plaintiff.
The Court granted a temporary injunction against the defendants and restrained them from using in any manner, manufacturing, marketing, distributing, displaying for sale, etc. in shops, websites or on any e-commerce sites in relation to their medicinal and pharmaceutical preparations and from using as part of their trading name or corporate name or domain name, email, the trademark and/or the word GRIFFON and/or GRIFF or any mark deceptively like the applicant’s trademarks.
[Laboratories Griffon Private Limited v. Griffon Biometrix Private Limited, 2022 SCC OnLine Bom 6613, decided on 29-11-2022]
Advocates who appeared in this case :
Mr. Amit Jamsandekar a/w. Ms. Archita Gharat, Mr. Vignesh Kamat, Mr. Saiprasad Mandlik and Mr. Kiran Mehta i/b. Mr. Kiran J. Mehta, for the Applicant / Plaintiff;
Mr. Simil Purohit a/w. Mr. Ameet Mehta, Ms. Ami Oza, Ms. Yesha Shah i/b. M/s. Solicis Lex, for the Defendant.
*Arunima Bose, Editorial Assistant has reported this brief.
