Introduction:
The case involves JK Cement Company which is an Indian multinational cement company. The company headquarter is in Kanpur, India. It is a leading cement manufacturing company in India. The Company has over four decades of experience in cement manufacturing with Grey Cement plants in Nimbahera, Mangrol and Gotan in Rajasthan and in Muddapur, Karnataka. A complaint has been filed by them against Anav Industries and Anr ,where they are being accused of copying the trademark of JK Cement to sell their products to the customers.
Case Details:
02.03.2022, Plaintiff from its marketing team received complaints of and inquiries about the goods i.e., Cement/Wall Putty sold under the impugned identical similar trademark ‘JK Premium’ bearing the impugned mark ‘JK’ with deceptively similar label/packing/colour combination/trade dress, over which the name of Defendant No.1 herein was mentioned as manufacturer and was found to be sold by the Defendants.
It is further averred in the plaint that Defendant No. 2 Naresh Sultania claiming to be trading as Anav Industries, 26-B, Industrial Estate, Tifra, Bilaspur, Chhattisgarh – 495001, Defendant No. 1 herein, has filed an application for registration of the mark vide trademark application no. 4899143 dated 11.03.2021 on ‘Proposed to be Used’ basis in respect of goods Thinners and thickeners for coatings, dyes and inks, Agglutinants for paints and for putty, which is pending under objection as it also identical/deceptively similar to Plaintiff’s prior adopted and used as well as registered trademark JK, its label/packaging and colour combination.
It is contended by learned Senior Counsel appearing on behalf of Plaintiff that a plain comparison of the impugned mark of the Defendants makes it apparent that the Defendants have with the mala fide intent of infringing and passing off their goods, dishonestly adopted the trademark/label of the Plaintiff. Defendants are taking undue advantage of the pre-established goodwill and reputation enjoyed by the Plaintiff under their registered trademark JK, its variants, its label/packaging etc. The impugned trademark/label.
Defendants are identical in nature, have identical trade channels and are sold to the same class of purchasers. The triple identity test therefore stands satisfied in the present case.
Having heard learned Senior Counsel appearing on behalf of the Plaintiff and having perused the documents on record, this Court is of the view that Plaintiff has established a prima facie case in its favour for grant of ex-parte ad-interim injunction. Balance of convenience also lies in favour of the Plaintiff and irreparable loss shall be caused to the Plaintiff in case an ex-parte ad-interim injunction is not granted.
It is averred that Plaintiff is an ISO 9000 certified Company and the cement manufactured and marketed by the Plaintiff conforms to BIS Standard. Plaintiff’s JK White Cement is sold across 43 countries around the globe and it has strong international presence.
It is averred that labels/packaging of the Plaintiff with original colour combination as brought forth in the plaint, constitute distinctive trademarks of the Plaintiff under Section 2(m) of the Trade Marks Act, 1999. The Plaintiff’s artistic works in their respective labels/packaging are duly protected within the meaning of the provisions of the Copyright Act, 1957, being the original artistic works.
Result of this case :
As all the evidences shows that the both the Defendants have infringed the trademark of JK Cement . The court continues with the demand of the Plaintiff which is prima facie (legal term or a legal claim which is made when the prosecution has enough evidence to proceed with a trial of judgement and to prove that the defendant is guilty.)
These injunctions are passed either through an ex-parte order or are passed if the defendant, even though present was not heard fully. It is generally observed that: Such injunctions are passed through severe damage caused to the petitioner in such a way that only an ex-parte order may grant relief.
Provisions of Order 39 Rule 3 CPC shall be complied with by the Plaintiff, within a period of five days from 23/03/22.
Based on this the Defendants were restricted from manufacturing, selling, promoting any of their products to anyone till the last hearing.
Trademark Act, 1999
A trademark is a word, phrase, symbol, or design that helps distinguish the source of the goods of one party/organisation from that of others.
Infringement of Trademark
The term infringement means the violation of someone’s rights. In case of infringement of a registered trademark, the person may file a suit for damages.
For filing such a suit the following conditions must be met:
The person filing the suit (plaintiff) JK Cement must be the registered owner of the trademark.
The person who is infringing (defendant) Anav Industries and Anr must be using a mark that is similar to that of the plaintiff such that it can easily be confused as one another.
Such use by the defendant is not accidental in nature.
The use of the mark by the defendant must be in the course or similar goods or services to that which the trademark is registered to.
The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses. There is no copyright protection for ideas, procedures, methods of operation or mathematical concepts as such.
Copyright deals with the rights of intellectual creators in their creation. The copyright law deals with the particular forms of creativity, concerned primarily with mass communication.
Section 14 of the act defines copyright as:
In case of literary, dramatic or musical work:
a) Reproducing the work in any material form which includes storing of it in any medium by electronic means, b) Issuing copies of the work to the public which are not already in circulation,
c) Performing the work in public or communicating it to the public, d) Making any cinematograph film or sound recording in the respect of work, e) Making any translation or adaptation of the work.
In the case of artistic works:
a) To reproduce the work in any material from including storing of it in any medium by electronic or other means, depiction in three dimensions of a two dimensional work and depiction in two dimensions of a three dimensional work, b) Communicating the work to the public, c) Issuing copies of work to the public which are not already in existence, d) Including work in any cinematograph films, e) Making adaptation of the work, and to do any of the above acts in relation to an adaptation of the work.
INFRINGEMENT
Where a person intentionally or unintentionally infringes the rights of the copyright holder, the holder may be subject to the following remedies available under this Act.
Civil remedies
These remedies are given under Section 55 of the Copyright Act, 1957 which are:
Interlocutory injunction
This is the most important remedy against the copyright infringement, it means a judicial process by which one who is threatening to invade or has invaded the legal or equitable rights of another is restrained from commencing or continuing such act, or is commanded to restore matters to the position in which they stood previous to the relation. Thus for granting the interlocutory injunction, the following three factors are considered as necessary:
• Prima facie case, an assumption of the court that the plaintiff can succeed in the case and become eligible for relief.
• Balance of convenience, in it the court will determine which parties suffer the greater harm, this determination can vary with the facts of each case.
• Irreparable injury, it is difficult to decide and determine on a case by case basis. Some examples of it include- loss of goodwill or irrevocable damages to reputation, loss of market share.