RPG Enterprises Limited v Riju Ghoshal Trading As RPG

13th May, 2023 - 9:59 am Categories: Trademark 0 Comments

Introduction

The plaintiff company is an Indian industrial group with over twenty years of business. The adoption of its trademark RPG originates from the company’s founder and well-known industrialist Mr. Rama Prasad Goenka. Over the years, RPG and the companies in its group have adopted a number of stylized/descriptive trademarks, including the mark RPG, to distinguish their various goods and services” in Classes 5, 9, 12, 16, and 30 as per the Trade Marks Act of 1999. (Act).

The plaintiff in 2017 came to know that the first defendant, Riju Ghoshal, submitted a trademark application for the name “RPG optical”. The audit revealed that the accused are a married couple who jointly own and administer “RPG Pharmacy” and “RPG Opticals.” Also, they have registered the RPG trademark-containing web addresses www.rpgpharmacy.com and www.rpgopticals.com.

[Image Sources : Shutterstock]

The plaintiff expressed opposition and demanded the cessation of the process of marketing of defendants’ products as “RPG” and to sign a pledge for not using the mark improperly in the future. The services provided by the defendants under the umbrella of RGP marks were similar to that of the plaintiffs. Hence the present suit was fil

Contention of defendant

According to the defendant, the adoption was justified as it is the compilation of the first letters of Riju, Poulami and Ghoshal respectively that constitutes RPG. It claimed that the marks were different, that the defendant was a retailer (classes 35 and 44) as opposed to the plaintiff, who was a manufacturer (class 5), and that the defendant was only using the mark as a trade name. It also relied on Section 29(5) of the Act, which states that in order to prove infringement, the plaintiff must show that the goods the defendant is selling are the same as or identical to the former, which is not the case.

The defendants argued that the plaintiff cannot claim infringement of its RPG mark under Section 29(4) of the Act until and unless the RPG mark has been recorded in the list of well-known trademarks that is maintained by the Trade Marks Registry.

Contention of plaintiffs

The continuous, comprehensive, and uninterrupted use and promotion of the aforementioned trademarks in India and internationally is what has given the RPG/RPG marks their distinctiveness.

The plaintiff argued that the RPG mark must be acknowledged as a “well known” trademark as it is registered across various classes of products and services and have long-standing goodwill and reputation, extensive and ongoing usage of the mark, and other factors.

Furthermore, it was argued that the adoption or use of the contested marks is likely to mislead and confuse customers of the relevant trade. Both “RPG Opticals” and “RPG Pharmacy” appear to be connected with previously registered and utilised RPG Marks. The distinguishing features of the Defendants’ trademarks are RPG and the other elements are non-distinctive descriptions of the services covered by them.

Decisions

• Whether there has been an infringement of the trademark by the defendants under Section 29(4) of the Act?

As per Section 29(4), to establish infringement under it, three factors are required to be satisfied. The assurance of the following objectives in terms of the trademark in question includes whether if the present trademark-

1. “is identical with or similar to the registered trademark, and
2. is used in relation to goods or services which are not similar to those for which the trademark is registered, and

• The registered trademark has a reputation in India and the usage of the mark would lead to unfair advantage of the distinctiveness of original proprietor.”[1]

The court rejected the defendants’ argument on the essentiality of “well known” status of the trademark to prove infringement under section 29(4) and held that in claiming infringement under section 29(4) of the trademarks act, it is not necessary to prove that the previously registered mark is “Well Known” under section 2(1)(z) of the same act but the mark should have reputation in India.

• Whether there can be an action of passing off against the defendants?

The tort of passing off is committed when a trader uses an established trade mark in such a way that consumers are misled about the source or origin of the goods or have their thoughts directed towards the company whose name is already associated with the trade mark in the marketplace. Even if the competing traders’ products or services are distinct, we believe that this fact would not entirely remove the likelihood of confusion or deception. Customers can constantly wonder whether the owner of the trade mark has launched an innovative commodity if a very distinguishing trade mark is used on a class of items that its proprietor does not deal with. This element could influence consumers’ purchase decisions.

The honorable court turned down the defendants’ argument of trading in totally different class of goods by referring to the case of  Sunder Parmanand Lalwani and Ors. vs. Caltex (India) Ltd. [2]where the Division Bench of our Court while dealing with the question whether there was any probability of confusion between ‘Caltex’ watches and ‘Caltex’ petrol and other oil related products of defendants, observed observed:

“On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark ‘Caltex’ in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents”

In Bata India Ltd. vs. Pyare Lal and Co. Meerut City and Ors[3]. , the question in issue involved the plaintiff, manufacturer of shoes, and Defendant, who was the producer of goods like foam and similar products. Rejecting the argument that there was no possibility of any deception on the purchase of foam materials in the market, the Court observed:

“How would an ordinary consumer know that the plaintiff wasn’t creating foam or foam material?” Does the average buyer enquire about the manufacturer of the product? Generally speaking, the answer is no. He makes purchases based only on his impressions.

The Hon’ble High Court noted that the grounds governing a case of passing off are namely: Goodwill and reputation associated with the plaintiff’s mark, actual or probable public confusion or deceit, and actual or probable harm to the plaintiff as a result of such usage. Contrary to the traditional approach of maintaining the passing off action, It was held that even if the defendants were not creating or manufacturing any goods that were identical to those of the plaintiff, a passing off case would still be valid. A passing off action would occur when it is probable to misrepresent something or provide the wrong impression that something belongs to someone. The plaintiff has completed all the requirements in regard to its registered trademark and has built out a case of passing off against the defendants, after examining all the aforementioned elements in the claim of action of passing off.

• Whether there has been an infringement by the defendants of the impugned mark “RPG” which they have been using as a trade name “RPG Pharmacy” and “RPG Opticals” under Section 29(5) of the Act?

The Act addresses the state of affairs involving the infringement of a trade mark in the form of a trade name is section 29(5). Reading Section 29(5) concludes that there are two essentialities to be met in order to prove infringement under that section. First, the usage of the registered trademark by the user as his or her business name, and second, the individual must have the engagement in trade with respect to products or services for which the trademark has been registered.[4]

To demonstrate infringement, both of the elements must be met due to the incorporation of the copula ‘and’ in the provision. The defendants in the present case proposed the argument that they don’t deal in the same goods or services for which the plaintiff had registered the trademark. This disobeys the second criteria of the provision. The Hon’ble Court agreed with this argument and determined that as the defendants are engaged in the business of providing different goods and services, there has been no trademark infringement by their incorporation of the registered trade mark as their business name.  

Conclusion

It is a settled principle of the trademark act, 1999 that a person cannot adopt someone else’s trademark for the trade of their deceptively similar goods and services. The court made it abundantly clear in the present case that to maintain an action under section 29(4) of the act the mark shouldn’t essentially be a well known trademark, defying the previous trend of using the terms “well known” and “mark with reputation” as synonymous. Also the court cleared the air on section 29(5), that the trade names, if not used for the similar class of goods and services, cannot be held infringing. The court discussed in detail about the passing off actions and held the defendants liable under the same.

Author: Surabhi, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] See, section 29(4), Trademarks act, 1999, available at: https://legislative.gov.in/sites/default/files/A1999-47_0.pdf

[2] Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. [AIR 1969 Bom. 24].

[3] Bata India Ltd. v. Pyarelal & Co., Meerut City & Ors [AIR 1985 All. 242]

[4] See section 29(5), Trademark act, 1999, available at: https://legislative.gov.in/sites/default/files/A1999-47_0.pdf