Facts 1:
Defendant -Good
The Plaintiff claimed that the wordmark "GOOD DAY" is a well-known mark and they have invested considerable time and resources for the promotion of products bearing the said trademark. The plaint set out the sales pertaining to the product under the trademark "GOOD DAY", as well as promotional expenses incurred by the Plaintiff.
Issue:
The Defendant was using the mark "GOOD DAY" for Toothpaste - which is identical to Plaintiff's well-known mark "GOOD DAY". Defendant was in fact operating a website under the domain name 'gooddayoralcare.com', which subsumed the Plaintiff's well-known mark "GOOD DAY".
Submissions:
Senior Counsel for the Plaintiff submitted that the mala fides of Defendants are evident from the fact that they not only adopted the impugned mark "GOOD DAY", but also that they wrongly adopted several representations of the Plaintiff's 'smile device' as well, which when seen together are deceptively similar to the Plaintiff's registered marks. From the fact that the Defendants are using the impugned trademark, it is evident that the general public would associate the Defendants' product with the Plaintiff's, and consequently, cause confusion in the eyes of the consumers.
Senior Counsel for Defendant submitted that the mark "GOOD DAY" is generic mark and is being used by several other entities. In fact, the said mark has been registered in favour of under several other classes in favour of other entities. He submitted that the Plaintiff, therefore, cannot claim a monopoly over the mark "GOOD DAY" or seek an injunction against the Defendants on this ground.
The Counsel for the plaintiff, further argued that the mark in question is a well-known mark. This, in fact, was also declared so by the Intellectual Property Appellate Board [hereinafter, 'IPAB'], in an order dated
Legislation:
A 'well-known trademark' is defined in Section 2(1) (zg) as: "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
Similar cases of well-known trademark have been discussed below:
In the case of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the defendant was using the plaintiff's logo 'three-pointed human being in a ring' and the word 'Benz' for which the plaintiff sought injunction against such use of his logo. The court while recognizing plaintiff's logo as a well-known trademark on the ground of trans-border reputation and goodwill granted injunction against the impugned use of logo by the defendant.
In another case of
Therefore, keeping in view the above precedents read with the findings in the Britannia's case, it is evident that 'GOOD DAY' is a 'well-known trademark'.
Furthermore, Section 29 in The Trade Marks Act, 1999 inter alia states as follows:
Infringement of registered trademarks:
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in
In the present scenario, the defendant was accused of infringement of the Plaintiff's trademark, by using the identical mark on its goods, taking unfair advantage of the goodwill and recognition of the Plaintiff's brand.
Held:
Defendant's use of the trademark, which is only recent and such adoption is prima facie not honest and is intending to take advantage of the reputation and goodwill of "GOOD DAY", which is likely to mislead an average man of ordinary intelligence.
Thereby, as the balance of convenience lies in favor of the plaintiff an ex parte interim injunction was passed against Defendant restricting them from offering a sale or any kind of dealing in the goods bearing the impugned mark. Also, Defendant has been directed in case of the impugned domain name, to suspend the same.
Footnotes
1 https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks
2 https://iprlawindia.org/wp-content/uploads/2021/11/BRITANNIA-INDUSTRIES-v-GOOD-DAY-ORAL-CARE-ORS.pdf
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr Chitwandeep Kaur
Upscale Legal
606,
G-39
Tel: 9818228118
E-mail: rashisuri@upscalelegal.com
URL: www.upscalelegal.com
© Mondaq Ltd, 2021 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source