Bombay High Court: In a case filed by the plaintiff, Khadi and Village Industries Commission, a statutory commission pertaining to the trademark ‘KHADI’, which includes word mark, device mark and label mark, seeking an interim injunction against Mumbai Khadi and Village Industries Association, Manish Pitale, J., granted interim injunction in favour of the plaintiffs.
The grievance of the plaintiff is that the defendant has been using the impugned marks consisting of the word ‘KHADI’ and the depiction of the ‘Charkha’ logo in conjunction with its name, which infringes the word mark, label mark, and device mark registered in favour of the plaintiff.
The Court noted that the defendant cannot dispute that the prominent, essential, fundamental and substantial features of the registered trademarks of the plaintiffs are copied in the impugned marks of the defendant. This would ordinarily satisfy the requirement of demonstrating a prima facie case as regards infringement and passing-off.
On the contention of the defendant based on the documents claiming annual reports dating back to the year 1946 onwards, demonstrating prior use of the word ‘KHADI’ on behalf of the defendant, the Court noted that that the defendant cannot escape the consequence of using a similar / deceptively similar mark, by taking recourse to Section 34 of the Trademarks Act.
Interestingly, an undertaking given by the defendant in a previous suit stated that it was not selling any product called, labeled, or described as ‘KHADI’ and it agreed not to sell any ‘KHADI’ product without a certificate from the plaintiff, however, the Court observed that the defendant cannot now turn around and rely upon the definition of the term ‘khadi’ in Section 2(d) of the Khadi & Village Industries Commission Act, 1956 as being limited to cloth or textile.
Thus, the Court held that prima facie, the plaintiff has made out a strong case in its favour for protection of its proprietary rights as regards the registered trademark and the defendant cannot avoid interim injunction by relying upon Section 34 of the Trademarks Act.
The Court restrained the defendants from manufacturing, selling, offering for sale, advertising directly or indirectly, or providing any kind of goods and/or services under the mark ‘KHADI’, either as a word or as part of its trademark or logos.
[Khadi Village Industries Commision v. Board of Trustees, Mumbai Khadi and Village Industries Association, 2022 SCC OnLine Bom 7137, decided on 14-12-2022]
Advocates who appeared in this case :
Dr. Birendra Saraf, Senior Advocate a/w. Ms. Shwetasree Majumdar, Ms. Shreya Ganguly and Mr. Jay Sanklecha i/b Bimal Rajasekhar for Applicant / Plaintiff;
Mr. Venkatesh Dhond, Senior Advocate a/w./ Mr. Rashmin Khandekar, Ms.Karishni Khanna, Mr. Atmaram Patade, Ms. Mohini Thorat and Mr. Suraj Naik i/b. Mr. Atmaram Patade for Respondent / Defendant.
*Arunima Bose, Editorial Assistant has reported this brief.